When a game becomes famous, a whole universe of products is often created to meet the expectations of its fans. Besides the game itself, commercial activities include the sale of garments, toys, action figures (among others), using the trademarks, characters or making other references to the game.
As they reference the intellectual property of others, such products should only be sold with an authorization of the game holder, otherwise usage may amount to trademark or copyright infringement, as well as an act of unfair competition.
A common strategy for rights holders is to pursue the registration of game elements and characters as figurative trademarks in strategic classes, such as classes related to clothing or toys. In addition, the trademark must be used at least once every 5 years to prevent such registration from expiring.
For copyright, no registration is required in Brazil. In this case, the protection arises at the time of creating the work and evidence that the work was created previous to another is enough to ensure that the holder can enjoy protection against third parties.
Finally, unfair competition arguments can be raised when a fraudulent means is used to divert the clients of others, according to the Brazilian industrial property law.
The above rights can be the basis for extrajudicial notifications or, even, judicial actions depending on the extent of the undue use of the other’s intellectual property.
For minor offenders, speedier judicial measures are preferable, such as Preliminary Injunctive Action. The main purpose of such measures is to encourage the offender to immediately cease the violation. If the offender cooperates and does not contest the action, the decision is set aside and the action discontinued.
For major offenders, or in cases that require a hearing of substantial evidence by judge, an ordinary court proceeding is required, where in addition to the request for an injunction, the rights holder can seek financial compensation for any harm caused.
Such measures are also valid for violations related to the offering of services, for example, in the case of restaurants, hotels or other service that uses the theme of the game in their commercial activities.