Ocarina of Time and the challenge of genuine use in legacy games

This month, two gaming juggernauts are set to dominate the conversation. Grand Theft Auto VI and the remake of The Legend of Zelda: Ocarina of Time are launching within weeks of one another, creating what some have already labelled the “Barbenheimer” of gaming. Their presence looms so large that several studios have reportedly chosen to avoid the clash entirely by pushing back release dates.

Deciding which game is ultimately “better” will likely come down to gamers’ personal preferences. However, as a trade mark attorney, my mind inevitably wanders elsewhere: what does the reintroduction of iconic games such as Ocarina of Time tell us about trade mark strategy, the protection of long-running gaming franchises, and how publishers can future-proof their legacy portfolios for potential remakes, remasters, and re-releases?

In the UK, whilst there is no post registration use requirement to maintain a registration, a trade mark that has been registered for more than five years can be challenged on the basis of non-use. If the owner cannot demonstrate sufficient commercial use of the mark capable of maintaining a market share or preserving an outlet for goods bearing the mark (known as “genuine use”), they may struggle to enforce their rights and the registration may ultimately be removed from the register.

This raises an interesting issue when it comes to older video games.

Take Zelda, for example. Many of the franchise’s most beloved entries are decades old and were originally released for consoles no longer manufactured, and in formats such as games cartridges that are not readily compatible with current systems. Whilst some of these games have been ‘kept alive’ through ports to newer systems or through Nintendo’s online virtual console products, not every successful gaming franchise has benefited from the same treatment.

For many older games, workarounds such as emulation, or purchasing the original games, consoles and cartridges on the second-hand market, may be the only means of access. Unless such activity can be shown to amount to genuine commercial exploitation of the mark by the trade mark owner or with its consent, it may not be sufficient to support a claim of genuine use. There is therefore an inherent tension between the enduring value of some legacy titles and the reality that they may be tied  to obsolete platforms.

For Ocarina of Time, this is not so relevant, as the pre-sales alone have passed over 100,000 in a single month. However, it highlights a broader point. Somewhere in the archives of every major video game publisher are dormant game titles with significant nostalgic value but little current commercial activity. So, what can rights holders do to help ensure their iconic titles remain protected and future-proofed?

• Maintain comprehensive records of use of the trade mark throughout its lifecycle, particularly once the 5 year post-registration period has elapsed, so that evidence of use is readily available if enforcement action becomes necessary or the registration is challenged.
• Where a brand retains sufficient goodwill, consider re-releases, anniversary editions, collector’s editions, remasters, or launches on alternative platforms.
• At the point of renewal, assess whether the level of sales, consumer recognition, and strategic value associated with the brand justifies maintaining the registration for both commercial and defensive purposes.
• Consider whether existing registrations adequately cover modern methods of distribution and monetisation, such as downloadable software, NFTs/digital collectibles, entertainment services, and online communities.
• Refresh use through ancillary merchandise. Even where a game itself is dormant, continued use on merchandise, apparel, collectibles, and promotional materials may help maintain commercial relevance and brand recognition.
• Preserve rights in key sub-brands. Publishers often focus on the main franchise name but overlook character names, logos, in-game factions, and recurring features that may have standalone value in future releases.
• Continue to monitor dormant brands. A dormant franchise can become attractive to third parties looking to adopt similar names. Regular watching services and proportionate enforcement can help prevent dilution and maintain exclusivity.
• Review ownership chains. Legacy titles can change hands through acquisitions, restructurings, or studio closures, potentially presenting evidential and ownership issues years later. Ensuring assignments and licences are properly documented can avoid problems when a revival is planned.

All of this leaves me wondering: what are your favourite legacy games that you still hope will one day make a comeback?