Promoting Innovation in Toys and Games

By Noelene Treloar, Of Counsel and Adrian Trioli, Principal Adrian M Trioli - Intellectual Property

www.adriantrioli.com

Promoting Innovation in the Toy and Games Industry

Changes to Australian Design Law**

Noelene Treloar

The Toy and Games Industry increasingly relies on intellectual property (IP) to protect research, development and innovation and gain commercial benefits through licensing. Registration of industrial designs is one form of IP and plays a key role in the recognition of toy and game products. In Australia, design registration is a relatively quick and inexpensive procedure. Recent major changes to Australian Design Law provides support for toy and game owners to protect, enforce and licence their design rights in Australia. We focus on two changes below.

• Introduction - Designs in

Australia

Design rights protect the new and distinctive appearance of a product – features such as shape, configuration, pattern or ornamentation. Registration of a design grants to the owner the exclusive rights to use, make, import, sell, hire or otherwise dispose of the product or authorise another person to do so – including through exclusive licensing!

Under Australian Design Law, a design application undergoes an initial formalities examination by IP Australia and is then automatically registered within about six (6) weeks. A registered design can remain registered and not examined for the life of the registered design, being a maximum of ten (10) years, with a renewal due after five (5) years. Once a design has been registered, the design owner can request postgrant examination of the design by IP Australia whereby the visual features of the product are compared against the prior art base. Assuming that post-grant examination is successful, the registered design will then be certified.

Requesting examination is not mandatory. However, enforcement action can only be taken against third party infringers once a design has been examined and certified by IP Australia. A design needs to be certified before a “cease and desist” letter can be issued to an alleged infringer.

The Australian Government has recently made a number of refinements to Australian Design Law, with two significant changes highlighted below:

1. A new 12-month Grace

Period for Self-

Publication or Disclosure

In a significant development for Australian Design Law, commencing 10th March 2022 and for publications or use on or after 10th March 2022, there will be a 12-month grace period for self-publication or disclosure before filing a design application in Australia. This step will bring Australia into line with jurisdictions such as the United States and the European Union.

The introduction of the 12-month grace period provides greater scope for toy and game companies to work with third party designers, whilst reducing the risks of invalidating disclosures.

2. Exclusive Licensees have the right to claim infringement

From 10th March 2022, the exclusive licensee of a design in Australia will have the right to bring design infringement proceedings. Whilst the right to obtain relief will only apply to conduct occurring after 10th March 2022, the change aligns Australian Design Law with the rights of exclusive licensees for other IP rights. This change recognises the impact design infringement can have on exclusive licensees. Depending upon the circumstances, the registered owner will still need to be involved in any design infringement proceedings (whether as a defendant or plaintiff).

• Summary

Research, development, innovation and licensing are key drivers of competitive advantage and success in the Toy and Games Industry. The introduction of a 12-month grace period for self-publication or disclosure of a design brings Australia into line with jurisdictions such as the United States and the European Union. The ability of exclusive licensees of registered designs to bring design infringement proceedings aligns with exclusive licensees of other IP rights. Could your business benefit from the changes?

**Note: This article has been prepared for general information purposes only and not for the purposes of providing legal advice. Please contact the authors if you require assistance in Australia or New Zealand (www.adriantrioli.com). Ms Noelene Treloar will also be participating in the Australian Toy Fair Digital from 28 March 2022 to 1 April 2022. Otherwise, please liaise with your local IP Counsel to put measures in place to best protect your IP.

Chris Chun Design is excited to announce 4 new licensing collaborations for 2022. Entering the Australian gift and stationery market for the first time, Chris has collaborated with The Aird Group (TAG) on a new range of products featuring his unique Chunoiserie Style including exquisitely painted bird and floral patterns. Planned for launch in March 2022, the key items in this first release include journals, glasses cases, jewel cases, keychain purses and soy-based scented candles with gorgeous gold foil packaging. ‘This collection offers a unique style to consumers’, says Jordan Aird, Brand Development & Marketing Manager for TAG. ‘We don’t see much chinoiserie style gift and stationery in our current market and with Chris’s style and flare, he offers a modern story telling with his designs. We’re confident that consumers are going love this collection!’ The Aird Group (TAG) is a family owned greeting card and giftware company owned and operated out of Adelaide, South Australia and has been for over 40+ years.

FUNIMATION AND CRUNCHYROLL

Existing and new Crunchyroll subscribers will now have access to library and simulcast content previously exclusive to Funimation. This move makes good on the promise to Australian and New Zealand fans that the merger of AnimeLab and Funimation, and now Funimation and Crunchyroll, would bring together the previously separate services into a single subscription. Crunchyroll’s pricing remains unchanged, offering fans the ultimate anime experience with subs, dubs, films, and simulcast series in over 200 countries and territories and in 10 languages. Colin Decker, CEO of Crunchyroll said, “When we brought Funimation and Crunchyroll together last year, our top priority was to put fans first,” said Colin Decker, CEO of Crunchyroll. “Unifying all of our brands and services under the Crunchyroll brand globally enables us to offer more value than ever before as we combine subs, dubs, simulcasts, library, music, movies, manga—all into one subscription. The new Crunchyroll is the realization of a dream, and we are grateful to the creators of anime and the millions of fans who have joined us in making the community what it is today.” 40,000+ sub and dub episodes are now available on Crunchyroll for Australian and New Zealand fans, with more hitting the service daily over the next few weeks ahead. An allnew series from the upcoming April

season – the biggest on record to be announced soon – will stream only on Crunchyroll; Funimation will continue to add new episodes of current series. Fans of anime will be thrilled that Crunchyroll’s ad-free subscription options have not changed, creating a huge benefit for new and existing subscribers who will no longer have to pay for two services. (Crunchyroll tiers are Fan, Mega Fan (monthly) and Mega Fan (yearly). In addition to consolidation of SVOD services, Sony-owned Funimation Global Group, LLC will now operate as Crunchyroll, LLC and has initiated rebranding across its global footprint to solidify Crunchyroll as the single, global brand for anime.

GUESS HOW MUCH I LOVE YOU IN KMART

SLR Productions’ Guess How Much I Love You – The Adventures of Little Nutbrown Hare is hopping into Australian retailer, Kmart for the first time this Easter with an exclusive infants and children’s apparel range. The deal brokered by Mitch Dowd’s Brand Lab label on behalf of SLR Productions will see 39 Guess How Much I Love You – The Adventures of Little Nutbrown Hare styles launch. The extensive range featuring the much-loved characters Big Nutbrown Hare, Little Nutbrown Hare, Little Redwood Fox, Little Field Mouse, Little Gray Squirrel, Little White Owl, and Blue Bird will appear across branded knit and flannel pyjama sets, onesies, dresses, long sleeve tees, hoodies, track pants, beanies, socks, and slippers. Also included in the launch are ladies pyjamas. The Guess How Much I Love You brand by Australia’s SLR Productions has produced two TV seasons comprising 78 episodes as well as two holiday special films and broadcasts in over 160 countries. The SLR Productions animated series is based on the classic book written by Sam McBratney, illustrated by Anita Jeram and published by Walker Books. “I am so thrilled to be seeing Guess How Much I Love You – The Adventures of Little Nutbrown Hare hopping into Kmart just in time for Easter. Together with Brand Label we have developed an extensive infants and children’s apparel range sure to delight the littlest and biggest of kids.” said SLR Productions’ CEO and Executive Producer, Suzanne Ryan.

Moose Toys have entered their 2022 growth strategy with a number of licensed partnerships, heavily majoring on the preschool sector. They have been appointed as the new master global toy partner for the Octonauts relaunch and new product development is underway for Bluey. “We are doubling down on our preschool licensing partnerships, a top performing sector for us,” commented Paul Solomon, co-owner, Moose Toys. “We will expand our popular line of ‘Bluey’ toys, based on the hit preschool series distributed by BBC Studios airing on Disney Junior, and introduce a brand-new partnership with the mega-hot property Octonauts. Moose is at the top of its game thanks to our incredible creative team of developers and designers and our supportive retail partners. At Moose, we pride ourselves on staying ahead of the curve and delivering toys that spark imagination with elements of surprise and delight.” On a different note, Moose’s latest release, Akedo – Ultimate Arcade Warriors, packs a punch. These retro arcade-style fighters bring the on-screen action IRL, with a oneon-one battle of skill and strategy. Each warrior is placed into their own battle controller and delivers a series of strikes until a player lands the final knockout move – a Split Strike that shatters the defeated opponent in half. There are 39 unique warriors to choose from – including ninjas, robots, gladiators, Vikings, teddy bears, dinosaurs, clowns and more, all with different moves and weapons. The Ultimate Battle Arena is the ultimate fighting stage with thirty-five real battle sound effects, two arena backgrounds to choose from and a scoreboard to track the Akedo tournament. There’s also a training mode for practice in-between bouts. The launch was brought to life in partnership with Nickelodeon who debuted The Akedo Super Ultimate Ultimate Tournament on their YouTube channel, featuring an “as live” bracket style competition between super-influencers battling for the title of Ultimate Akedo Champion.

GLOBAL AGENTS IN PLACE FOR TETRIS

The Tetris Company, Inc. recently announced changes to its worldwide network of merchandise licensing agents for the world-famous Tetris® brand, including new agent signings and renewals. These changes come as the company heads towards the iconic video game brand’s 40th anniversary in 2024. “We’re always looking to bring new partners on board who will help grow the Tetris brand with fresh products and experiences that are innovative, fun and meaningful for our global fan base,” says Megan Buettner, head of consumer products at Tetris. “With the 40th anniversary of Tetris on the horizon, we look forward to working with all our new and existing network of licensing agents to make it the most memorable celebration yet.” Updates to the Tetris brand’s merchandise licensing agent network include: The Tetris Company has extended its agency agreement with Lisle Licensing for UK, Ireland and Channel Islands, managed by Francesca Lisle; Brand Fresh Management, led by Janice Ross, will continue to manage licensing agreements for the United States and Canada; IMG will continue to manage APAC (Asia-Pacific region), under the guidance of Miki Yamamoto, in addition to Brazil with support from Glenn Migliaccio; CPLG, led by John Taylor, will now represent the Tetris brand in France, Italy and India. In addition, CPLG’s representation will continue in Iberia, CEE (Central Eastern Europe), CIS (Commonwealth of Independent States, including Russia), Benelux, Greece, Turkey, MENA (Middle East and North Africa) and the Nordics (Finland, Sweden, Denmark, Norway). The Tetris Company has also signed Studio 100 to the agency roster for Germany, Switzerland and Austria, under the guidance of Joachim Knödler and KOPA Licensing, with the support of Carlos Carvajal, will expand coverage for the brand in Colombia, Peru, Chile, Ecuador, Mexico, Belize, Costa Rica, El Salvador, Guatemala, Honduras, Nicaragua and Panama. Current representation for the Tetris brand also includes WP Brands in New Zealand and Australia, managed by Lim Mi-Kyoung, and Born Licensing for global promotions and advertising under David Born.