Game-makers face accusations of trademark infringement

Two cases filed by a Malta-registered holding company for King.com Ltd - the creators of the highly successful  “Candy Crush Saga” Facebook game franchise - against American game developers TeamLava, LLC,  and Storm8 Studios LLC ltd, have been temporarily adjourned pending the outcome of a related case in a partial sentence delivered yesterday.

The cases were filed in September 2014 after King.com Ltd, which is registered in Malta, had filed a judicial protest claiming that the defendant companies had created “match three”-type games named “Candy Mania" and "Candy Blast Mania” which were nearly identical to “Candy Crush”.

King.com Ltd accused the companies of hitching a free ride on the back of the “enormous reputation enjoyed by Candy Crush in the EU” and benefiting from the reputation, attraction and prestige of the same. They also diluted and tarnished the reputation of the original game, it said.

The company requested court declare the use of “Candy” as the first element of a name together with a second element, as a contravention of its trademark rights and order the cessation of its use. It also requested the court liquidate damages in its favour.

The defendant companies TeamLava and Storm8, however, replied that King.com Ltd’s claims were already subject to proceedings before the European Office for Harmonization in the Internal Market (OHIM).

The defendants then filed a counter-claim, arguing that the trademarks were lacking in distinctive character and did not describe the product, requesting the court declare the trademarks registered to King.com Ltd to be invalid and prohibit their use.

The reason for this vaunted invalidity, according to the defendants, was because “the Community trademarks registered in the name of the plaintiff were lacking in distinctive character or product description. The nature of the games offered under the trademarks consist of descriptive words and phrases associated with this type of game and this was obvious to the plaintiff company [King.com Ltd] when they registered the trademarks.”

In addition, similar trademarks had already been in use in the market at the time of the plaintiff’s registration, said the defendants.

In two partial sentences, Judge Mark Chetcuti, presiding the First Hall of the Civil Court, said the court considered the action brought by King.com Ltd to primarily be one declaring a breach of community trademark. The central issue was the use of the wordmark “Candy,” noted the court.

Judge Chetcuti held that the counterclaim filed by the defendants raised issues that must be conclusively addressed before it continued to hear the case, saying that “it would be impractical, if not dangerous, for a court to declare the violation of a right which itself is being contested.”

The court upheld the request that the case be temporarily adjourned pending the outcome of proceedings before the OHIM.