As the story goes, an American gamer coined the name “meeple” in November 2000, by combining the words “my” and “people” to identify the wooden game pieces used in the board Carcassonne.[i] Today, “meeple” is understood by many board game enthusiasts as meaning a game character piece or figurine, as opposed to one with exclusive association with the Carcassonne board game. Carcassone is published by Hans im Glück, but as far as the writers are aware the publisher was not the first user of the term “meeple”.
There are many terms which may be used in common parlance without understanding that those terms may also be the subject of trade mark rights. In the annals of trade mark law, many trade marks, such as Escalator or Launderette, became generic descriptions as a result of a laissez faire approach by their registered rights owners to third party descriptive use.
Many terms, however, sit on the edge of becoming generic and often are the subject of contest as to whether they have lost their trade mark significance. Given the current controversy, “Meeple” may be one of those contested terms.
In Australia, Meeple is a registered trade mark owned by Holdings Unlimited Pty Ltd covering “Games” amongst other goods. Even though “Meeple” may be considered by some to have descriptive significance, it remains a registered trade mark.
As a result other traders who may adopt terms similar to “Meeple” for their competing products risk allegations of trade mark infringement even if “Meeple” is intended to be used descriptively. Defending descriptive use of terms which are invented or “coined” can present significant difficulty. As the lines as to what constitutes trade mark use are often blurred in this context, allegations of trade mark infringement can have significant consequences, even if ultimately unable to be sustained, leading not only to damages claims or rebranding costs, but also damage to commercial relationships with suppliers or distributors, in addition to reputational damage.
In our example, between 2017-2021, Hans im Glück secured registrations for MEEPLE as a trade mark in Germany, Europe and the United Kingdom. Hans im Glück then issued cease and desist letters asserting infringement against competing publisher Cogito Ergo Meeple in relation to its worker placement game, branded Meeple Inc. Cogito Ergo Meeple ultimately announced in 2024 that it would rebrand as Cotswold Games and also change the brand for its board game “Meeple Inc” to “Tabletop Inc”.[ii]
This dispute was widely discussed in the board game industry as some considered Hans im Glück should not have exclusivity to the term MEEPLE as a trade mark. [iii] This begs the question: How can traders seeking to adopt terms which they perceive as descriptive in a particular industry guard against a complaint from the owner of a trade mark?
Clear the term for use first
As the MEEPLE trade mark registrations demonstrate, sometimes unexpected terms may be registered as trade marks. Accordingly, it is important to conduct clearance searches for all new and unique names before adoption.
One must consider not just the brand used for the product, but names adopted as branding elements which form part of the overall branding and architecture of the product. In the context of board games, this could include names adopted for pieces, parts of boards or other signs which may identify the board game and distinguish the board game from others games in the market. If such searches identify trade mark rights of concern, traders may need to weigh up the risk of legal challenge against the potential advantage to be gained in using the particular term.
Such searches may also inform the brand strategy for the product being brought to market and, in the board game industry, assist the developer of the game or its publisher to put in place rights to prevent others from copying elements of their game. For example, a search may suggest that a relevant IP Office has taken a position on the inherent distinctiveness of a particular word or provide insight as to where they may be a gap in the market to monopolise a term. It may also identify specific markets where there is greater risk in using a particular term as compared with others and which competitors may seek to assert rights. Such information may be critical in ensuring that distinctive elements or invented terms are able to be secured to the benefit of the game developer or publisher as opposed to falling into generic use.
Seek registration
Trade mark registrations act as both a sword and a shield. Not only does a registered mark provide a basis for stopping others from using conflicting trade marks, in Australia it also affords a statutory defence to an action for trade mark infringement. That defence may become critical in staving-off third parties seeking to adopt rights in terms which have been invented by a game developer.
In other countries, securing registration also ensures control over key branding elements and it is critical that such rights are put in place before any third party uses the term descriptively or to avoid trade mark rights being diminished by third party use or registration.
An extreme example of how the trade mark system may find itself being used defensively arises from Corey Thompson, co-owner of YouTube channel Above Board TV and co-host of the industry-focused Board Games Insider podcast, and Gen Con event manager Marian McBrine filing US application 98576863 MEEPLE, apparently to stave off a perceived threats of infringement from Hans im Glück – reports suggest they sought to get in first and block Hans im Glück.[iv] Indeed, there are 20 applications/registration of various statuses which have been filed in the US for marks which include or consist of MEEPLE for a variety of goods, 10 of which cover gaming related goods.The Australian MEEPLE registration is owned by a company related to the Meeple Distributors Pty Ltd game retail business , which appears unrelated to Hans im Glück.
All of this highlights the issues which can arise from one’s own success and not considering protection or clearance of key branding elements beyond the main trade mark used on product packaging. Merely arriving first to market is not sufficient in a global context to assert exclusivity to a term and either prevent use of that term as a trade mark by competitors or as a description by the consuming public. Careful consideration should be given to a registration strategy to protect the interests of the party coining the term noting the jurisdictional nature of trade mark rights – i.e. the need to secure rights in each country in which a particular mark is in use.
Consider challenge
A further consideration arises where a term has arguably fallen into common descriptive use, a potential basis for challenging the validity of a trade mark registration that has become generic. However, such a challenge requires court proceedings in some countries, including Australia, which can require an investment of significant financial and time burden. As a result, these kinds of challenges typically only arise as a response to proceedings for infringement or where there is a clear competing interest in the term.
As a result of these costs, some parties have taken to the court of public opinion. In some cases, this has been used to great effect as a way of responding to threats and allegations of infringement regarding use of terms which are arguably descriptive, but are also registered as trade marks. For example, the board game industry press weighed heavily against Hans im Glück’s enforcement efforts. However, such use of the media presents significant risks including for defamation, the tort of injurious falsehood or breaches of various fair-trading legislation. Such a strategy should therefore be carefully considered.
The “meeple” controversy provides a timely reminder of the importance of carefully planned and executed branding strategy to protect marketing investment and avoid unexpected and unnecessary dispute. It also reminds us that trade mark rights impact in every industry and indeed almost any invented word even, if perceived as having a descriptive connotation, may nevertheless be the subject of trade mark rights.
If you have any questions, please contact Lauren Eade (leade@dcc.com), Stuart Green (sgreen@dcc.com) or your regular DCC contact.
[i] Meeple – Wikipedia
[ii] Tabletop Inc. by Cotswold Games – May Update – Gamefound
[iii] The word ‘meeple’ is being trademarked in the US in reaction to ‘cease and desist’ activity from Carcassonne publisher Hans Im Glueck – (boardgamewire.com) , https://www.pcgamer.com/games/board-games/intellectual-property-law-has-come-for-the-word-meeple/
[iv] The word ‘meeple’ is being trademarked in the US in reaction to ‘cease and desist’ activity from Carcassonne publisher Hans Im Glueck – (boardgamewire.com)