Recently, there is a trademark dispute case attracting people's attention, and it is about the famous mobile game "glory of king" which is registered by a wine company.
BACKGROUND
In China, everybody knows the "glory of king" is created by Tencent and is popular in all ages. Tencent started the trademark registration for "glory of king" as early as October 2015 and extended the to all classes since 2016.
But on November 19, 2015, Guizhou WenQu ChengYu Wine Co. Ltd. filed a trademark application for "Glory of King" in class 33 and got registration on May 7, 2018. Furthermore, the company applied for other associated trademarks, such as "glory of king 1+1", "Return of the glory of king" in 2018, but all of them were refused.
To protect its interest, Tencent Technology (Shenzhen) Co. filed a request for invalidation of the trademark "glory of king" registered by Guizhou WenQu ChengYu Wine Co. Ltd. on June 19, 2018. It claimed the disputed trademark infringed Tencent's prior copyright and constituting a similar trademark with the trademark "glory of king" registered by Tencent, leading to public confusion on the market. Tencent also submitted the copyright registration certificate, the ranking of games, awards, and media coverage as evidence.
DECISIONS
CNIPA holds that the two trademarks are similar to each other, but the designated goods item of the Guizhou WenQu ChengYu Wine Co. Ltd. is "fruit wine (including alcohol)", while the designated goods items of Tencent are "electronic publication (downloadable)" etc., they are different in the respects of sales channels and service objects, etc., which do not constitute similar trademarks on similar goods.
Since the trademark sample of "glory of king" is an ordinary printed Chinese character, which cannot independently express any thoughts and emotions of the work, CNIPA holds that it is not protected under the Copyright Law of China. Hence, neither the trademark registered by Guizhou WenQu ChengYu Wine Co. Ltd. infringed the copyright of Tencent, nor constituted unfair competition and exaggerated advertisement under the Trademark Law, so they decided to maintain the trademark registration by this wine company.
It is not an accident. Hijackers have sharp eyes on the hot topic and are always fast to file trademark applications, such as "Li Wenliang," ，"Leishen Mountain," and "Huoshen Mountain" during Covid-19 were rush registered on the medical-relative items.
How can the real owners protect themselves from bad-faith trademark registrations?
I. Making a strategic blueprint for your trademark and extending the protection
In the early stage, the owner should make a plan in advance when registering the trademark. The items of the trademark application should cover all the current products. Otherwise, just like the "Fawn Tea", a sub-brand of Luckin coffee, it was not registered on all the main services items at the initial stage, which was hijacked by others.
Along with the development of the enterprise, the right owner should regularly evaluate their trademark registration plan. Most enterprises applied for the trademark on the main products or services in the initial stage. But with the growth of the company, the business area may extend to upstream and downstream products. It is awkward if someone hijacked his trademark on those products. Hence, it is advised to supplement classes by filing new applications for your brands to extend the protection.
II. Monitoring and watching your trademark
Regular monitoring of your trademark is also essential. The examiners refuse a similar trademark application on similar goods/services items, but they will not be active to refuse those in different classes even if the trademark is famous. Meanwhile, the examiners will only consider the existed trademark registrations and applications to confirm if a new trademark application is accepted or not but will not consider the copyright, trade name, domain name, etc. when examining the application. In other words, a registered trademark is still available to challenge if you think it is similar to your unregistered trademark or infringes your copyrights, trade name rights, domain name etc. And the opposition, cancellation, and invalidation are applicable to remove the trademarks for the different situations of a trademark application/registration.
2021-04-28
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