[2] Tencent wins consecutive cases against the National Intellectual Property Administration, "Honor of Kings" belongs to Nanshan Invincible

[4] Compiled from: Red Star News
 
Now, when people hear 'Honor of Kings,' the first reaction is definitely the game under Tencent. However, Guizhou Wenqu Chengyu Liquor Co., Ltd. (hereinafter referred to as 'Guizhou Wenqu Chengyu Liquor') has successfully registered 'Honor of Kings' as a liquor trademark and also established Guizhou Honor of Kings Liquor Co., Ltd.

 
 

In a fit of anger, Tencent filed a lawsuit against the National Intellectual Property Administration and Guizhou Wenqu Chengyu Liquor Industry in court.
 
Case review
On June 19, 2018, regarding the 'Honor of Kings' trademark registered by Guizhou Wenqu Chengyu Liquor Co., Ltd., Tencent requested the National Intellectual Property Administration to declare it invalid on the grounds that it infringed Tencent's prior copyright of the 'Honor of Kings' trademark. However, this request was rejected by the National Intellectual Property Administration.
 
Dissatisfied with the above ruling, Tencent filed a lawsuit against the China National Intellectual Property Administration in the Beijing Intellectual Property Court, with Guizhou Wenqu Chengyu Liquor Industry participating as a third party in the litigation.
 
Tencent believes, Guizhou Wenqu Chengyu Liquor Industry successfully registered "Honor of Kings" as a trademark, which easily leads the relevant public to mistakenly believe that it has been approved by Tencent, or that it has a specific connection with Tencent. This behavior damages Tencent's prior rights to the name of the game "Honor of Kings" and violates the relevant provisions of the Trademark Law. In addition, Guizhou Wenqu Chengyu Liquor Industry acted with obvious malice by registering terms related to "Honor of Kings," with the intention of trademark squatting and obtaining improper commercial benefits.
 
The National Intellectual Property Administration believesAlthough the two trademarks constitute similar trademarks, the goods designated for use by Guizhou Wenqu Chengyu Winery, such as "fruit wine (containing alcohol)," are significantly different in sales venues and target customers from the goods approved for use by Tencent Company, such as "electronic publications (downloadable)," and therefore do not constitute similar trademarks on similar goods. At the same time, "Honor of Kings" is ordinary printed Chinese characters and cannot independently express the ideas and emotions of a work, so it does not belong to the works protected under China's Copyright Law. The registration by Guizhou Wenqu Chengyu Winery does not infringe Tencent Company's copyright, nor does it constitute the "exaggerated publicity with deception" scenario under the Trademark Law, and it also does not constitute "obtaining registration through deceitful means or other unfair competition methods."
 
Guizhou Wenqu Chengyu Liquor Industry believesThe National Intellectual Property Administration has determined that the facts are clear, the law is correctly applied, and the procedures are legal.
 
 
[1] Court Opinion
First instance: Tencent wins the case
The case was heard online at the Beijing Intellectual Property Court on March 17, 2020, and the first-instance judgment was announced on June 17, 2020, with Tencent winning the lawsuit.
 
The Beijing Intellectual Property Court determined that the trademark application in dispute infringed upon the prior rights of the game title 'Honor of Kings', ruled to revoke the challenged decision, and ordered the defendant, the National Intellectual Property Administration, to make a new ruling.
 
The National Intellectual Property Administration, dissatisfied with the first-instance judgment, appealed to the Beijing Higher People's Court.
 
Second instance: Appeal dismissed, original verdict upheld.
After trial, the Beijing High People's Court held that Tencent's 'Honor of Kings' can be protected as a prior right to a work's title. When Guizhou Wenqu Chengyu Winery sold goods for which the disputed trademark 'Honor of Kings' was approved for use, it inevitably borrowed the market reputation established by the prior work title 'Honor of Kings' or improperly harmed its commercial interests.
 
In addition, Guizhou Wenqu Chengyu Winery has also applied to register multiple trademarks containing the words "Honor of Kings", "King", or "Glory". Its legal representative also serves as the legal representative of Guizhou Honor of Kings Winery Co., Ltd., and Guizhou Wenqu Chengyu Winery's application to register the disputed trademarks is subjectively malicious.
 
Based on the evidence on record, the Beijing High Court held that the relevant public is likely to associate goods using the name of the game "Honor of Kings" with the copyright owner of the work, and thus be misled. Therefore, the registration of the disputed trademark violates the provision of Article 32 of the 2014 Trademark Law on "damaging the existing prior rights of others," and Tencent's related claims are to be protected.

 

 
Trademark Law of the People's Republic of China
Article 32 An application for trademark registration must not harm the existing prior rights of others, nor use unfair means to preemptively register a trademark that others are already using and that has a certain influence.
 
 
[1] The author's perspective
The author believes that regarding the above legal provisions, the following key points should be noted:
 
1、Existing prior rights of others
Currently, the 'prior rights' stipulated in our country include prior enterprise names, trade name rights, prior copyright, prior design patent rights, name rights, distinctive logo rights, portrait rights, etc. The trademark right in this case is undoubtedly a type of prior right.
 
The so-called 'existing' rights refer to those that have already legally and validly existed before the dispute occurs, and this continuous state must persist into the objection or dispute. If the prior rights no longer exist when the administrative action is taken, it may not involve the issue of infringing upon prior rights.
 
2、Improper means
Unfair means are mainly reflected in 'malice,' that is, knowingly registering a trademark before someone else who has not previously registered in this category, intending to appropriate it. The malice here should be in the state of 'knowing' or 'should know.' Registering in advance using unfair means is only a necessary condition for applying this provision, not a sufficient condition. If the trademark that is preemptively registered has been used earlier by someone else but has not yet achieved a certain influence, it does not constitute a preemptive registration that infringes prior rights under the meaning of this provision.
 
3、A trademark with certain influence
A trademark with a certain degree of influence can be understood and recognized in the same way as a well-known trademark. An unregistered trademark that has reached this level of recognition constitutes an unregistered trademark with legal protection significance, without requiring a very high level of fame. Moreover, the trademark that is maliciously registered should be identical or essentially indistinguishable from a trademark with a certain degree of influence. A trademark with a certain degree of influence is required to be known to a certain number of relevant public after being used for a certain period, usually referring to trademarks that have been used for a certain time and, due to a certain sales volume or advertising promotion, are well known among a certain range of relevant public, and are regarded as unregistered commercial signs that distinguish the source of goods.