Board Games’ IP protection in Latin America (Pt. 2)

Just weeks apart from our previous article about board games (Pt. 1), this article tries to IP-complete one of the sectors that is a miss at many trade events, but one that is living its golden years as you are reading this article.

If you are an enthusiast of board games, like me, you might already know the amount of board games, card games, and so forth that there are out there. An example of this can be found on the BoardGameGeek website. A site that provides its users with a list of more than 150,000 games listed from best to worst based on ratings and number of votes from its users.

In 2027, the worldwide board games sector is expected to reach a projected market value of €3,200million, €51 million just in South America. 

I have a board game idea, where shall I start to protect it?

1) First of all, we recommend you checking our IP basics. There you can find content on IP tips for your business, Intellectual property rights in a nutshell, and also some content created together with other helpdesks on IP protection using international systems available in each region: e.g. Madrid system, or how to protect your IP rights at Trade fairs (think about all the board game events you go to, and whether you are ready to disclose all your boardgame ideas..–it is best to keep all the information safe, and protect it before disclosing them to the public).

Since your goal is to get acquainted with how your company can benefit from IP protection in the creative industries, please also check our section on this sector: Creative Industry.

2) Second, we would like to emphasize the importance of protecting your trade marks, designs, and copyright of the board game in Europe first, if you would like to sell/distribute/license your board game in the EU. To do so, we highly recommend you checking out the website from our colleagues of the European IP Helpdesk. They will provide you with all the information you might need for free.

Taking this into account, let’s see what successful brands are doing to protect their IP rights first in the EU, and then in Latin America.

The case of Wingspan: first protect your IP in Europe

Released in 2019, Wingspan (a game by Stonemaier Games) rapidly hit 1 million copies sold in just 3 years. The game has been quite the sensation for some time, comparing itself to the success of games such as Settlers of Catan, 7Wonders, or Ticket to Ride.

Besides it being a great game to play, colorful, easy to play, and fun, one of the reasons for their great success is that they had a name and that they registered their trade mark as fast as they could.

Registration of IPRs

Remember that before having success with your business, you need to take care of your business assets.

The board game name "Wingspan" was applied for in Europe in 2020 before the EUIPO. At the EUIPO, the trade mark was registered for the following classes of the Nice classification: 9, 16, 28, 41.

So let's check what the headings of each class mention, to know why they selected these 4. Remember that the headings of each class of the Nice Classification describe the nature of the products or services contained in them:

- Class 9: for games software; Interactive computer game programs; Interactive game software; Interactive video game programs; Computer games programs downloaded via the internet [software]; Downloadable software.

- Class 16: for books; Printed publications; Rule books for playing games; Art prints.

- Class 28: for board games; Table-top games and gambling devices; Electronic games; Hand-held consoles for playing video games; Electronic board games; Apparatus for games; Playing cards; Puzzles; Chips and dice [gaming equipment]

- Class 41: entertainment services; Online gaming services

If your company is at this stage of the process, in which you need to protect the TM first in the EU, don’t forget to check out the EUIPO’s website, and to contact the European IP Helpdesk for free IP support. Remember that the EUIPO offers EU TM protection in all EU countries, with one single application.

As Wingspan did very well, you are now ready to follow their example in Europe. But what about the internationalisation of Latin America? I know what you might be wondering....

Why should I protect in Latin America if I already protected my IP in Europe?

Bear into account that if there is another brand protected in Mexico (for instance) than yours, and this brand is similar or the same as the one you want to protect there, you may be infringing their rights without knowing it. This will lead to possible:

- seize of your goods at the border

- complaints/claims for infringement from the other party

- you will not be able to operate legally

- in the end, you will have to do a rebranding

If you do not protect your brand, you will not have exclusivity, and anyone will be able to do what your company does without infringing the law.

Now that this is clear, we would like to show you how to expand to Latin America, protecting your TMs first. And what good examples do we have in the internationalisation of Latin America better than "CATAN" itself?

Settlers of Catan: the expansion of your boardgame to Latin America

To think about an IP strategy for the region of Latin America, it’s better to figure out what the best brands in your business are doing. And how many are doing it better than the settlers of Catan?

- At the EUIPO, the German company Catan GmbH registered their word mark, and different figurative TMs (1, 2, 3) for classes 9, 16, 28, of the Nice Classification.

Word mark

A word mark consists exclusively of words, letters, numbers or other standard typographic characters, or a combination of any of those.

Figurative mark

A TM where non-standard characters, stylisation or layout, or a graphic feature or a colour are used. They can include marks that consist exclusively of figurative elements or of a combination of verbal and figurative elements.

Source: EUIPO (2023)

- At the World IP Office (WIPO), they registered an international TM for the same classes of the Nice classification, to protect their TM in China and the US.

- As to Latin America, they have carried out the following strategy:

Chile (INAPI)

- In Chile, they registered (in 2018) with one application a combined TM for classes 9 and 28.

- They have also registered with a second application, a word mark for the same classes (9, 28).

Brazil (INPI)

- In Brazil, they registered (in 2017) with 3 different applications, 3 combined TMs for 3 different classes: 9, 16, and 28.

But, why did they have to carry out 3 different applications, one for each class? That is because, in 2017 brazil had a single class application system. Using the international TM system (Madrid system), users may benefit from a multiclass application in Brazil, since the country joined this system in 2019.

- As to the word mark, they registered (2010), CATAN for classes 28, 41, and: 25. This class 25 was registered for the following products: “Hats, caps, etc.; Caps being headwear; Clothing; Neck warmers; Shirts; Chemisettes; Slipovers.” Needless to say, back then they also had to apply for each single class application.

Ticket to ride: a ticket to Latin America please

Another mega-seller board game these years has been “Ticket to Ride”. Released in 2004, this game can provide us with another good example of how to do things right.

- At the EUIPO they protected their word mark for classes: 9, 16, 28, and 41.

- In Latin America, they decided to protect just the word mark, but only for class 28 of the Nice Classification, in Argentina, Brazil, and Chile.

As we mentioned before, class 28 already protects “board games; Table-top games and gambling devices; Electronic games; Hand-held consoles for playing video games; Electronic board games; Apparatus for games; Playing cards; Puzzles; Chips and dice [gaming equipment]”.

Rethink your brand when internationalizing: Aventureros al tren

Do you speak German, Spanish, French, Polish and Finnish? When it came to the protection of Ticket to Ride, the owners of Ticket to Ride had to rethink their brand in different languages. Ticket to ride is sold in different countries as “Zug um Zug (German), Les Aventuriers du Rail (French), Aventureros al Tren (Spanish), Wsiąść do pociągu (Polish), and Menolippu (Finnish).”What this means, is that you may also have to translate the name of your board game and protect it as a TM too.

This is what they did in Latin America, where they registered “Aventureros al tren” too: Chile and Argentina, for class 28.

They also registered "Aventureros al tren" at the EUIPO for class 28, considering Spanish speakers in the EU.

Other IPRs you should bear into account: domain names

We have focused hereby on trade marks, but whenever you are creating a board game you will be creating something that has different means of protection.

In our previous article (link to Pt. 1), we discussed the different ways of protecting a board game, besides TMs, that is: via copyright protection, design protection, patent protection, and game mechanics. One thing, that you should not forget, as well, is to take care of having a domain name in Latin America if you are successful there.

Domain names

An Internet domain name is the address of your company or the board game name on the Internet. It enables everyone in the world to access the information of your products and services online.

Catan and Devir are both good examples since they are both holders of some of the following domain names in Latin America: catanbrasil.com.br, devir.com.br, devir.cl, devir.mx, devir.co, deviramericas.com.

How to register domain names in Latin America?

First, always check whether the name of the website is available on «Whois» (www.whois.com).  

Depending on the country or countries you choose to create a domain name in, you will see that there are different NIC websites (national agencies in charge of the registry of domestic domain names)