For an iGaming business, international expansion can transform a successful local operator into a valuable global brand. But entering new markets brings an important intellectual property challenge: how do you protect an iGaming brand internationally?
Your trade mark is likely to sit at the heart of the business. It can distinguish your casino, sportsbook, gaming platform or app from competitors, support licensing and partnerships, and become a significant commercial asset. Yet trade mark rights are territorial, meaning protection in one country does not automatically give you protection elsewhere.
From my perspective as a trade mark attorney, I recommend treating international brand protection as part of the growth strategy from the outset.
Start with a strong trade mark
International protection begins with choosing a brand that is capable of being protected. A distinctive, memorable name is generally preferable to something descriptive of your services. This is particularly relevant in iGaming, where brands frequently use terms such as “bet”, “casino”, “slots”, “play” and “win”.
Before launching, conduct trade mark searches in your existing and intended markets. The fact that a name is available as a domain or appears to have no obvious competitors online does not mean it is safe from a trade mark perspective. Searches should consider identical and similar marks, including differences in spelling, pronunciation and overall commercial impression.
This becomes even more important internationally because a brand that is clear in one country may conflict with an earlier right somewhere else.
Choose the right international filing strategy
There is no single “worldwide trade mark”. Instead, protection needs to be obtained in the territories that matter to your business. For a UK-based operator, this could involve a combination of UK protection, an EU trade mark and international registrations covering other target markets. An EU trade mark can provide protection across all EU Member States through a single application.
For broader expansion, the Madrid System administered by WIPO can provide a streamlined route to seeking protection in multiple participating countries through one international application. The system currently covers more than 130 countries.
However, an international registration does not mean that every country automatically accepts your mark. Each designated country can examine the mark under its own domestic laws and refuse protection where appropriate. This is why international filing should be strategic rather than simply a matter of selecting as many countries as possible.
Where is your iGaming business going?
One of the biggest mistakes I see is treating trade mark protection as a snapshot of the business today. An iGaming company may start with a sportsbook in one market but subsequently launch an online casino, develop proprietary gaming software, enter new jurisdictions or license its brand to third parties.
Your trade mark portfolio should anticipate realistic expansion, which means you need to consider:
- Where will you operate in the next three to five years?
- Which markets are commercially important?
- Will you license the brand?
- Will you develop your own software?
- Will the same brand cover casino, sportsbook and other gaming products?
- Could the business be sold or attract investment?
The answers can influence both the territories you protect and the goods and services covered by your registrations.
Do not overlook enforcement when protecting an iGaming brand internationally
Registration is only one part of protecting an iGaming brand. As your business grows, the risk of third parties adopting similar names also increases. This could involve a competing casino, sportsbook, affiliate, software provider or domain owner.
International enforcement can be particularly complicated because trade mark infringement is generally dealt with under the laws of the relevant territory. An international registration provides a centralised way of managing rights, but the substantive legal consequences remain dependent on local law.
A sensible enforcement strategy therefore starts with monitoring, and your trade mark watching could cover:
- New trade mark applications
- New casino and sportsbook launches
- Domain name registrations
- App stores
- Social media
- Affiliate websites
- Competitor advertising
And early intervention is often preferable to waiting until another business has established significant goodwill under a similar name.
Depending on the circumstances, enforcement could involve an objection or opposition to a trade mark application, a cease-and-desist letter, domain name proceedings, platform complaint or court proceedings. The appropriate response will depend on the jurisdiction, strength of your rights and commercial objectives.
Build the portfolio alongside growth
International trade mark protection should evolve with the business. WIPO's Madrid System allows additional countries to be designated as a business expands, making it possible to extend the geographical scope of an international registration over time. This can be useful for an iGaming company pursuing staged international growth.
However, expansion should not be purely reactive. Filing too late can create problems if a third party has already registered the brand in a new target market.
Ideally, trade mark clearance and filing should form part of the market-entry process. Before entering a new jurisdiction, take some time out to ask yourself:
- Can we use the brand here?
- Can we protect the brand here?
These two questions should be answered before substantial investment is made in launching the brand.
Protect more than just the name
Your core word mark may be the most important asset, but an established iGaming business can develop a much broader intellectual property portfolio. Consider whether separate protection is also appropriate for logos and device marks, product names, app names, taglines, distinctive sub-brands, gaming titles, software and technology brands.
You should also ensure that ownership of the relevant intellectual property is properly documented. This is particularly important where branding has been created by external designers, agencies or development partners.
International growth needs international IP planning
A successful iGaming brand can cross borders quickly. A domain can be accessed globally, an app can be downloaded internationally, and an advertising campaign can reach customers in multiple territories almost instantly. Trade mark rights do not work in quite the same way, which is why proactive planning is essential.
The best approach is to:
- Select a distinctive brand
- Clear it in priority markets
- Secure appropriate registrations
- Monitor for conflicts
- Expand the portfolio as the business grows
For UK businesses, the IPO confirms that overseas protection may be obtained through national filings, EUIPO for EU-wide protection or the Madrid System for international protection, depending on the commercial strategy.
Ultimately, protecting an iGaming brand internationally is not simply about registering a name in as many countries as possible. It is about building an IP portfolio that supports where your business is today, where it intends to go tomorrow and how valuable the brand could become.
Edwina FitzHugh is a partner in Potter Clarkson’s trade mark team. If you’d like to discuss protecting an iGaming brand internationally, please contact her today.
