TOEIC loses trademark lawsuit "Shenwu 4" or forced to change its name, saying "the verdict is very unreasonable"

On July 22, TOEIC Network published an article through its WeChat public account saying that it had recently received the final judgment of the Beijing Intellectual Property Court on the infringement of the trademark right of "Shenwu 4", stating that it could no longer use "Shenwu 4" as the name of its games in the future.

Regarding the final judgment, TOEIC first stated that it "decided to respect the court's judgment and the state's regulations on trademark management", while claiming that "the judgment is very unreasonable".

Specifically, TOEIC Network gave reasons such as that "Shenwu" and "Wushen" opened the test at almost the same time, and that "Shenwu" was much more well-known than "Wushen". According to the evidence submitted, TOEIC also gave the unique name of the word "Shenwu" that has been recognized as a well-known trademark for many times, as well as user comments and popularity comparisons of Baidu Tieba "Shenwu Xiaoyao Waibi" and "Wushen 3 Bar".

    The first-to-apply principle is key

As the core product of TOEIC Network, "Shenwu 4" was judged to no longer use the original name, and the impact on TOEIC Network is undoubtedly huge. So the sentiment of TOEIC is understandable, but as TOEIC says, the law should and must be respected.

First instance judgment

According to the judgment, Wushen applied to the Trademark Office for the registration of the word trademark "Wushen" on May 20, 2009. The International Classification is Class 9 computer software and has been approved for registration and is valid from December 28, 2010 to December 27, 2030.

On March 29, 2011, Wushen Company applied again for the registration of the word trademark "Wushen" for Class 41 online games, which was also approved for registration, and the validity period is from January 7, 2014 to January 6, 2024.

According to the basic principle of "first-to-file" or "first-to-register" trademark registration, when two or more applicants for trademark registration apply for registration with identical or similar trademarks on the same kind of goods or similar goods, the applicant applying for the earlier trademark may obtain the exclusive right to use the trademark, and the subsequent trademark registration application shall be rejected.

Therefore, when TOEIC subsequently applied to the Trademark Office to register the trademark "Shenwu", it was rejected several times. According to the relevant review decision, the trademark registration of "Shenwu" has been rejected seven times between 2017 and 2020, and the reasons given by the trademark office each time are basically similar: "Shenwu" and "Wushen" are similar in terms of text composition, call, visual effects, etc., and there is no obvious difference in meaning, which has constituted a similar trademark.

In January 2020, the Beijing Intellectual Property Court ruled that the disputed trademark "Shenwu" and the quoted trademark "Wushen" were identical in composition, easy to be read, and that the two were used on the same or similar goods, which was likely to cause confusion and misidentification of the source of the goods by the relevant public, so the judgment dismissed TOEIC's claim. Afterwards, TOEIC appealed against the first-instance judgment and was dismissed and the original judgment was upheld.

    Legal awareness should be tightened

It is not difficult to find that the key to the incident that TOEIC can no longer use the name "Shenwu 4" is that the word trademark "Wushen" of Wushen Company was registered first, resulting in the "Shenwu", which was determined to constitute a similar trademark, could no longer be registered. TOEIC also admitted in the article that "it is undeniable that Wushen Century Company's intellectual property awareness at that time was stronger than that of us as a start-up".

Realizing this, TOEIC has also tried to start with another basic principle of trademark registration, "first-to-use principle", trying to prove that the "Shenwu" series of games was launched earlier than the time when Wushen Company applied for trademark registration, but it is still difficult to fight against prior registration.

Timeline of TOEIC production

The key factor is that when the court finds that "Wushen" and "Shenwu" are used as game names at the same time, although the meanings of the two words are slightly different, they will still lead to confusion and misidentification by the public. The judgment also cited the examples of "lunch box" and "box lunch", pointing out that the meanings of "box of rice" and "lunch in box" are indeed somewhat different, but it is easy to cause confusion when the relevant public is observed separately and pays general attention.

In the end, the court of second instance found that TOEIC's use of the game name "Shenwu 4" infringed the exclusive right to use two registered trademarks of Wushen Company, dismissed the appeal and upheld the original judgment.

Afterwards, TOEIC also cited the WeChat trademark right case in an article on the public account. However, the WeChat trademark situation is not the same as the dispute between "Shenwu" and "Wushen", and in fact, the "WeChat" applied by a company in Shandong was not successfully registered because it was opposed within the statutory opposition period. At the same time, the Beijing High Court, which heard the case, also pointed out that signs that do not have distinctive characteristics and cannot be used or registered as trademarks, regardless of the time of their registration application, do not involve the application of the principle of prior application.

The more common encounter is that after encountering similar trademark problems, most enterprises either pay for the trademark or choose to change their name to avoid risks. In fact, even as strong as Apple, it has encountered the "iPhone" trademark being preemptively registered by a Chinese company.

TOEIC's experience is sympathetic, but it also warns more colleagues in the game industry that they need to "fully insure" the product before the game is launched to avoid unnecessary troubles in the future.