News & Insights

COVID-19 has fuelled requirements to socially distance and stay home, as well as the desire for digital detox to counter Zoom fatigue. As a result, we’ve seen the adult board game market boom during 2020 and 2021. We’re not talking about Monopoly here, but instead, a market segment often referred to as modern board games – one of which is actually called Pandemic!

This rise in board game sales is not a COVID phenomenon – participation and sales have been growing steadily over recent years. As such, it is probably not surprising that there has also been a well-documented rise in counterfeit board games. Those counterfeits are not confined to markets, eBay or dodgy gift stores and tobacconists. Even hitherto trusted reseller Amazon can sometimes get caught out, especially through its third-party marketplace and “Fulfilled by Amazon” program that has become known as a marketplace for fakes.

Interestingly, Amazon and French board game giant Asmodee have recently teamed up to jointly take legal action against a seller of counterfeit versions of Asmodee’s “Dixit” board game.

rights at play

A producer of a product like a board game is likely to have multiple causes of action against a counterfeiter:

1. Trade marks: Games usually bear at least a couple of trade marks, for instance, a manufacturer’s name/logo and the specific game’s name/logo. Some counterfeiters will omit the manufacturer’s name, but the game’s name usually appears on the fake.
2. Copyright: Most fakes seek to faithfully reproduce the original game’s artwork, text and instructions. These are likely to all be copyright works. Often, this is done through scanning the original artwork, though sometimes the counterfeiters go to impressive lengths to create their own artwork.
3. Passing-off: By copying the overall get-up of other games (often well-known and popular games) the counterfeiters will be engaging in a passing-off by applying similar get-up to their games.
4. Misleading and deceptive conduct: In Australia, counterfeiting is likely to contravene sections 18 and 29 of the Australian Consumer Law, which prohibits misleading and deceptive conduct, as well as certain false or misleading representations. Similar statutory rights exist in other countries.

Any one of these causes of action can provide a remedy to the producer of the original board game. However, not all actions are equal. A successful trade mark or copyright infringement claim allows for an award of either damages or an account of profits, as well as additional damages for flagrancy. By contrast, the Australian Consumer Law only allows for compensation for loss. As such, being able to bring an action for IP right infringement can have significant benefits.

The act of selling counterfeit products can also constitute a criminal offence, both under the Copyright Act 1968 but also general state criminal statutes for theft or obtaining a financial advantage by deception. While criminal prosecution doesn’t provide compensation, reporting such crimes can help shut counterfeiters down.

how to improve your position?

Firstly, you need to ensure that you hold the relevant IP rights to enforce. This is, particularly, an issue with copyright, where ownership of anything created by a contractor will remain with that contractor unless assigned. Get an assignment of any relevant IP rights.

Secondly, register the IP rights wherever possible. Not only does registration open the door to infringement proceedings but also allows the utilisation of:

• Online marketplaces’ IP protection programs such as eBay’s VeRO and Amazon’s Brand Registry.
  Brand Registry requires a registered trade mark in each country where Brand Registry enrolment is sought. In countries where copyright registration is available eg China, India and the USA, this should be utilised as it demonstrates the existence of copyright and is often a requirement for utilising take down services.
• Customs seizure such as the Australian Border Force’s Notice of Objection system and other countries’ customs
  This enables infringing products to be seized on import before they enter the relevant market and may even prevent the export of counterfeit products. For example, if IP rights are registered in China and have been notified to Chinese customs, it will attempt to seize all counterfeit products prior to them being shipped from China.

take-away points

Whether your business is board games or any other kind of goods, there are some important lessons:

• register your IP rights in all relevant markets. This is primarily trade marks, but in some markets will include copyright;
• register with IP protection programs such as eBay’s VeRO and Amazon’s Brand Registry;
• utilise e-commerce take down programs to quickly and effectively remove counterfeit products;
• lodge a Notice of Objection with Australian Border Force;
• buy yourself a great modern board game to play this weekend.

The Macpherson Kelley IP team can assist you with putting in place a counterfeit monitoring and take down program, securing protection of your valuable IP, and enforcing your IP rights against any infringers. Feel free to get in touch.

The information contained in this article is general in nature and cannot be relied on as legal advice nor does it create an engagement. Please contact one of our lawyers listed above for advice about your specific situation.