Trademarks in the game industry usually appear in the form of game names, and the pursuit of uniqueness, high recognition, and effectiveness of communication across multiple media is the goal of the pursuit. However, this feature can easily lead to the fact that a trademark in the game category may fall into the situation of "lack of appearance" under Article 11 of the Trademark Law if it is not paid attention to when applying for it. This article will analyze the pain of the "lack of appearance" of trademarks in the game industry, and discuss the reasons and solutions behind them.
Author | Liu Zhichao, Beijing Sanyou Intellectual Property Agency Co., Ltd
Edit | Bruce
INTRODUCTION
Article 11 of the Trademark Law clearly stipulates that the following signs shall not be registered as trademarks: only the generic name, image and model of the goods; It only directly indicates the quality, main raw materials, functions, uses, weight, quantity and other characteristics of the goods; and others that lack distinctive features. These situations are collectively referred to as "lack of appearance".
With the release of the "2023 China Game Industry Report", we have witnessed the glory of the domestic game market, which points out that in 2023, the actual sales revenue of the domestic game market will exceed the 300 billion mark for the first time, reaching 302.964 billion yuan, a year-on-year increase of 13.95%, and the user scale will reach a record high, with a huge group of 668 million. However, in the new stage of vigorous development of the game industry in the mainland, it has to face the pain of growth, one of which is the problem of "lack of appearance" in the trademark licensing process.
Trademark, as an important sign to identify and distinguish the source of goods or services, its fundamental attribute lies in the distinctiveness of the trademark sign. This distinctiveness requires that the trademark sign should be sufficiently recognizable so that the relevant public can easily identify the source of the goods or services and avoid confusion, so that the trademark can play its central role in distinguishing the source of the goods or services. However, trademarks in the game industry usually appear in the form of game names, and the pursuit of uniqueness, high recognition, and effectiveness of communication across multiple media is the goal of the pursuit. However, this feature can easily lead to the fact that a trademark in the game category may fall into the situation of "lack of appearance" under Article 11 of the Trademark Law if it is not paid attention to when applying for it. This article will analyze the pain of the "lack of appearance" of trademarks in the game industry, and discuss the reasons and solutions behind them.
1. The current situation of trademarks in the game industry in the trademark licensing process due to the problem of "lack of visibility".
According to incomplete statistics from the third-party search tool [1], from 2017 to 2024, a total of 1,686 rejection review decisions (disclosed) related to "game" goods and services involving "lack of appearance" reasons for rejection are as follows:
Note: In some cases, both 11.1.(2) and 11.1.(3) apply
The above data is only a small part of the cases in which trademarks have entered the rejection review procedure after the rejection of trademarks, but they are enough to indicate the universality of the problem. What is even more worrying is that less than one-tenth of these trademarks that have been rejected due to "lack of intelligibility" have been successfully registered after the rejection review. This shows that the game industry is facing great challenges and dilemmas in the process of trademark protection.
The author has briefly sorted out the circumstances of the rejection review, which can be summarized as follows:
1. Only a very small number of applied trademarks are recognized as "only the generic name, figure and model of this product"
This situation is basically the same as the refusal of other classes, which reflects that with the improvement of intellectual property awareness, applicants have a considerable degree of awareness that trademarks should be distinctive, and can usually avoid directly applying for trademarks such as generic trade names or graphics in the industry.
2. Nearly 500 applied trademarks have been identified as "only directly indicating the functions and uses of the goods"
The fundamental reason behind this data is that Article 11.1(2) of the Trademark Law covers a very diverse range of situations, and applicants usually want to express their business ideas to a certain extent through trademarks, which is in conflict with the above-mentioned provisions of the Trademark Law. It is worth noting that the cases listed in the Guidelines for Trademark Examination and Trial are all typical, but in practice, the boundaries of the application of this provision are often blurred. In particular, in the trademark examination process, trademark examiners have greater discretion, which makes applicants and trademark agents often confused when grasping the scale.
3. The largest proportion of cases were rejected due to "other lack of distinctive features".
According to the Trademark Examination and Trial Guidelines, "other lack of distinctive features" generally refers to signs other than the above two provisions that are used as trademarks for designated goods or services that do not possess the distinctive features of the trademark in accordance with the common concept of society. This clause is often used as a catch-all clause. The situations involved in practice are also diverse. Based on the above-mentioned rejection cases, the author summarizes some common situations of "other lack of distinctive features" of trademarks in the game industry for the applicant's reference and attention to risk avoidance:
(1) Overly colloquial Internet vocabulary: e.g., "I'm going";
(2) Common daily life expressions: such as "time and you are beautiful", "crunchy";
(3) Ordinary advertising slogans: such as "play some gacha machine" and "world plan colorful stage";
(4) Combination of numbers and letters in general expression: e.g. "4UMETA" (the expression is easily considered as a product model);
(5) Word trademarks with too many words: e.g. "Exploding Speed, Dinosaur Chariot Blind Box";
(6) The name of other service establishments or business establishments is used for game-related goods or services, such as "grain store" (with the risk of "misidentification" rejection).
4. A very small number of trademarks are finally registered by using distinctive features to obtain distinctive features
For example, in the case of "Funny Horses", the applicant submitted screenshots related to the applied trademark, search results, screenshots of some media reports, sales orders and order statistics of the applicant's partners, sales records, product pictures and other evidence. After review, it was found that there was no evidence to show that the use of the applied trademark on the designated game equipment and other goods had become a generic name, and the evidence submitted by the applicant could prove that "Funny Horse" was a card game of the applicant, and it was used for a certain amount of publicity and formed a pointing relationship with the applicant. Therefore, the use of the applied trademark on designated game equipment and other goods has the distinctive features that a trademark should have, and does not violate the provisions of Article 11, Paragraph 1, Item (3) of the Trademark Law. [2]
Through the analysis of the above-mentioned case data, we note that the trial trend of reexamination cases in which the application for trademark is rejected due to "lack of appearance" is becoming more stringent. For the game industry, this change means that it is extremely difficult to obtain trademark rights through rejection review after the trademark application is rejected due to "lack of publicity". The reason for this is mainly reflected in two aspects: first, with the rapid development of the game industry, the number of trademark applications has increased dramatically, which not only exacerbates the complexity of the trademark application situation, but also prompts the trademark examination authority to continuously improve the examination standards to ensure that the trademark with stronger distinctiveness is authorized. Second, driven by market benefits, the game industry is often more inclined to use a more straightforward way to name game products in order to quickly open up the market and quickly attract and influence consumers. However, this practice often conflicts with the basic attribute that a trademark should have distinctive features, resulting in the rejection of the trademark as "lack of intellect" during the licensing process.
2. Analyze the defense ideas after the rejection of a trademark due to "lack of obviousness" through cases
The rejection of a trademark due to "lack of display" does not mean that there is no possibility of salvage. In fact, the applicant still has the opportunity to defend the distinctiveness of the applied trademark itself and the actual use of the trademark in the market through the rejection review or subsequent litigation procedures, so as to obtain the possibility of authorization. Based on the following cases, the author analyzes the defense ideas against the reason for rejection of "lack of intelligibility".
"Chaos and Order Redemption II." Trademark Rejection Review and Administrative Litigation[3]
Reason for rejection: The application for trademark violates the provisions of Article 11, Paragraph 1, Item (3).
The Applicant asserted that: 1. The Disputed Trademark is a combination of words such as "chaos", "order" and "redemption", which is not composed of existing commonly used phrases, and is a strong trademark, which has both originality and distinctiveness. 2. The Disputed Trademark is one of its masterpieces promoted worldwide, and since its launch on September 17, 2015, this large-scale online game has enjoyed a high reputation at home and abroad. The applicant submitted 22 pieces of additional evidence at the first-instance trial to prove that the disputed trademark was a strong trademark sign with distinctiveness and originality.
The court of first instance upheld the applicant's claim after trial, but the court of second instance rendered a contrary judgment, and the applicant was dissatisfied with the judgment of the court of second instance and filed a retrial with the Supreme People's Court, which was basically consistent with the judgment of first instance and upheld the judgment of first instance.
"Fallout: Refuge Online" Trademark Refusal Review[4]
Reason for rejection: The application for trademark violates the provisions of Article 11, Paragraph 1 (2).
The applicant's reconsideration is determined by: 1. The applicant enjoys a high reputation in online games and software development services and software products. "Fallout: Shelter" has gained great prominence and popularity through its widespread use around the world. 2. The applicant's other trademark "Radiation: Refuge" has been found by the court to be distinctive, as used in Class 41 designated services.
This case did not enter the litigation procedure, and after review, it was found that the use of the applied trademark on entertainment services, online games and other services on computer networks did not directly describe the content of the services, and the relevant public could identify the source of the services by them.
"ARTIFACT" trademark refusal review and administrative litigation[5]
Reason for rejection: The application for trademark violates the provisions of Article 11, Paragraph 1 (2).
The applicant asserted that: 1. The Disputed Trademark has multiple translations, does not directly indicate the content of the designated goods and other characteristics, and is distinctive, and does not constitute the circumstances provided for in Article 11.1.2 of the Trademark Law. 2. After years of use and publicity by the plaintiff (applicant), the disputed trademark has achieved a high degree of popularity, and has established a close corresponding identification connection with the plaintiff (applicant), which is distinctive.
The court of first instance and the court of second instance held that the meaning of the disputed trademark "ARTIFACT" was "artefacts, handicrafts", etc., and that the disputed trademark was designated for use in "computer game software; IC; The quality, function, and characteristics of goods such as computer game software are generally not described by words such as artifacts or handicrafts, so they do not directly indicate the quality, function, and use of goods, and can play the role of a trademark in distinguishing the source of goods, and have the distinctive characteristics that a trademark should have.
"Pro Evolution Soccer" Trademark Rejection Review and Administrative Litigation[6]
Reason for rejection: The application for trademark violates the provisions of Article 11, Paragraph 1 (2).
The Applicant asserted that: (1) the "Live" and "Football" themselves are distinctive, and the Disputed Trademark should be approved for registration; 2. The Applicant submitted evidence from 2001 to 2018 to prove that the "Live" series of games to which the Disputed Trademark was attached had a large number of user groups in China, were highly well-known, and had established a unique correspondence with Konami (the Applicant).
The court of first instance held that it is easy to understand the logo as "a football-type online game product" from the perspective of the logo itself, which directly indicates the content or characteristics of the goods, and cannot play a role in identifying the source of the goods. However, based on the evidence submitted by Konami, it can be determined that the Disputed Trademark has achieved a high reputation through publicity and use, and is used in "video game software; computer game software" and other products, which can be used to identify the source of the product, and have the ability to obtain distinctiveness.
The court of second instance upheld the judgment of the court of first instance.
Through the reasons and facts asserted by the applicant and the comments of courts at all levels on whether the trademark is "lacking in appearance", the following effective defense ideas can be sorted out:
1. To determine whether a trademark has acquired distinctive features through use, comprehensive consideration shall be given to the relevant public's perception of the trademark; the actual time of use of the trademark on the designated goods or services, the manner of use and the use of the trademark in the same industry; Factors such as the production, sales, and advertising of the goods or services using the trademark, as well as the characteristics of the goods or services using the trademark.
In the case of "Chaos and Order Redemption II.", the trademark application was used in 2015, and after more than two years of entering the second-instance procedure, and then after more than four years of trial by the Supreme People's Court, it finally ushered in a favorable judgment. The results of this judgment show that in the game industry, if the trademark is used extensively and frequently in a short period of time (3-5 years), it is expected to be recognized as "obtaining distinctive features through use".
However, for trademarks that do not have distinctive features per se, the requirements for evidence of their use in the trial procedure are higher, and the trademark needs to be used continuously for a longer period of time before it can obtain distinctive features. In the "Pro Evolution Soccer" (Class 9) case, the evidence submitted by the applicant dates back to 2001 and earlier, and the relevant evidence shows that the Pro Evolution Soccer series of games still occupies a certain share of the online game market in recent years, so the courts of first and second instance ruled that the trademark can serve the function of identifying the source of goods.
It can be seen that the evidence of trademark use plays a key role in overcoming the problem of "lack of obviousness". This reminds applicants that they need to pay attention to retaining evidence of trademark use in all aspects of product design, release, operation and publicity, so as to ensure that there is sufficient evidence to support possible trademark cases in the future.
2. The applicant should pay attention to the comprehensiveness of the evidence and the diversity of perspectives when choosing the defense method.
In the case of Chaos and Order II., in addition to providing evidence of the use of the applied trademark, the applicant also submitted additional materials with a high reputation of the applicant, and its own registered trademark file in the same language. In the case of "Fallout: Refuge Online", the applicant also submitted an additional court judgment that the same word mark was distinctive. With the support of these comprehensive materials, the applicant effectively defended the "lack of inconspicuousness" from two aspects: the distinctiveness of the trademark mark itself and the distinctive features obtained through actual use, and finally won the recognition and support of the court/original TRAB.
3. Whether the trademark violates the provisions of Article 11, Paragraph 1, Item (2) shall be determined in close conjunction with the quality, function and characteristics of the goods specified for use.
In the "ARTIFACT" case, although the trademark had the meaning of "handicrafts and works of art", the designated goods for use were "computer game software", etc., which obviously did not fall within the scope of the aforesaid meaning, so the courts of first and second instance held that the trademark had distinctive features.
4. The trademark authorization process is a long-term process, and for the applicant's important brand, it should be fully prepared to fight a protracted and tough battle, make full use of all the rights granted to the applicant by law, exhaust the rights, and actively strive for it.
3. Suggestions for the game industry on trademark protection
1. When naming a trademark, it should start from enhancing the distinctiveness of the trademark
The characteristics of game trademarks are mainly reflected in the following aspects:
(1) Distinctiveness: Game trademarks should be unique to avoid confusion with existing trademarks, so that they can be unique in the marketing process and be able to clearly identify and distinguish their game products.
(2) Relevance: A good game trademark should be able to match the game's content, style, and target audience. The brand name should reflect the theme, style, or context of the game, helping gamers build an emotional connection and resonate with it.
(3) Easy to remember and easy to spell: Game logos should be easy to remember and spell so that players can more easily communicate the name of the game when communicating the game orally or sharing it on social media.
(4) Language beauty: The brand name should have language beauty, bring pleasant auditory enjoyment to players, and thus increase the attractiveness of the game.
When applying for a trademark, if the trademark itself does not reach the level of "merely directly" indicating the characteristics of the goods, this provides the first step of a reasonable defense after the trademark is rejected due to "lack of indistinctness". As the saying goes, "striking iron still needs its own hardness", a well-designed trademark that can meet both market demand and legal requirements is the goal that enterprises should pursue.
In the author's opinion, game trademarks used in China are generally preferable to have two to four Chinese characters, such as "legendary", "Pokémon" and "Honor of Kings", which express a relatively neutral meaning, and the text composition is concise and easy to be recognized and called. When the trademark exceeds five words, it is easier for the creator to integrate the style and content of the game into the trademark, and the trademark with a large number of words increases the difficulty of being remembered by consumers, and the excessive number of words is also easy to be regarded as an "ordinary advertising language", for example, "where were you in the year you disappeared" is designated for use on goods such as "recorded computer game software", which is rejected because it is an advertising language.
In addition, it is particularly noteworthy that the 2021 Guidelines for Trademark Examination and Adjudication add that "if a trademark consists of an independent text part and independent other elements, and the word part does not have distinctive features, the trademark as a whole shall be deemed to lack distinctive features" [7]. In other words, when the word part of the combined trademark lacks distinctive features, it may not be feasible to achieve the distinctive feature of the mark as a whole by adding graphics.
2. The game content should have positive values
Games not only include plots, tasks, and operations, but also emotions, social interactions, knowledge, and even values, which can be used to impart knowledge, calm emotions, convey ideas, and build identity. It can be said that games have the function of conveying cultural concepts to a certain extent. While bringing huge profits to enterprises, games should also convey positive values to the public. On the other hand, if the content of the game involves vulgar, negative, bloody or violent elements, even if the trademark is already well-known, it may leave a negative impression on the trademark authority, which will adversely affect the direction of the case.
For example, "lying flat development" is designated for use in categories 9 and 41 of goods and services, and it is found that the applied trademark does not constitute a situation under Article 11, Paragraph 1, Item (3) of the Trademark Law. However, "lying flat" has a negative connotation, and the use of the applied trademark "lying flat and developing" as a trademark is likely to have adverse social impacts, which has constituted a situation referred to in Article 10.1.8 of the Trademark Law of the People's Republic of China[8].
3. Establish the trademark management system and intellectual property training system of the enterprise
Professional people do professional things: it is necessary and important for the special management of enterprise trademarks. Enterprise trademark management is a serious, complex, systematic and continuous work, and it is also a highly professional work. It is necessary for enterprises to set up and set up full-time trademark management departments or personnel, reserve corresponding budgets, coordinate internal and external resources, and establish various trademark management systems/rules to promote the realization of trademark value according to the development stage, scale and trademark management objectives at different stages, and benchmarking the industry situation[9].
The trademark management system of enterprises is not limited to the maintenance of conventional trademark information and the preservation of evidence materials, but also includes strengthening the intellectual property training of business departments to enhance their intellectual property awareness. In practice, some trademarks often have obvious problems of "lack of appearance", and although the company's trademark legal counsel has issued a risk warning, the business department still insists on applying and filing an application for registration, which is mainly due to the lack of awareness of the trademark by the business department. Therefore, it is recommended that enterprises establish a sound intellectual property training system to create a virtuous circle of intellectual property business from within, so as to enhance the importance and application ability of the entire organization to trademark and intellectual property.
4. Increase the influence and voice of the game industry in the intellectual property system
The game industry should pay more attention to the trademark sector, encourage enterprise trademark practitioners to go out, actively participate in academic activities, understand industry trends, and actively express demands, so that the official can intuitively hear the voice of the game industry, understand the difficulties and pain points of the trademark layout of the game industry, and promote the establishment of effective communication channels with the official.
5. Countermeasures after the rejection of the trademark application
First of all, the trademark application of important items adopts a grading strategy, that is, the classification is carried out according to the strength of distinctiveness at the initial stage of naming, and the basic principle is to apply for trademark application in the form of "1 core commodity" + "at least 2 alternative trademarks". In view of the characteristics of trademarks in the game industry, the "core trademark" can be selected to be suggestive, and one of the "two alternative trademarks" should be a trademark with obvious distinctive characteristics as a backing.
Second, there is a lot of room for active defense, especially the "only direct" situation referred to in Article 11.1(2) of the Trademark Law. For example, in the case of rejection of "Singing and Painting", the court of second instance held that the applied trademark was a word mark composed of "Singing and Painting", which had no fixed meaning as a whole, and was designated for use in "computer; Steelyard; It is not a direct expression of the function, use and other characteristics of the above-mentioned goods, nor is it a common form of expression of the advertising terms of such goods, which can play a role in distinguishing the source of the goods, and does not violate the provisions of Article 11.1.2 of the 2019 Trademark Law[10].
Finally, exhaust legal remedies. The Guidelines for Trademark Examination and Trial stipulate that the determination of whether a sign has acquired distinctive features through use, the case of rejection review and non-registration review shall be based on the factual status at the time of trial. In principle, the invalidation case shall be based on the factual status of the trademark at issue at the time of application for registration, and the factual status at the time of trial shall be used as a reference[11]. The Guidelines for the Trial of Administrative Cases Involving the Authorization and Confirmation of Trademark Rights of the Beijing High People's Court provide:
Where a party claims that the trademark at issue has acquired distinctive features through use, it may be determined by comprehensively considering the following factors:
(1) the use of the Disputed Trademark's logo is sufficient to enable it to play the role of identifying the source of the goods;
(2) the time, region, scope, scale, and degree of well-known use of the Disputed Trademark;
and (3) the use of the Disputed Trademark by other business operators. [12]
Therefore, the rejection of a trademark is not a "death sentence", and according to the actual trial period of the case, it takes about 2-3 years for the trademark to go from the application to the second-instance procedure of administrative litigation, while the game industry is characterized by rapid development and can accumulate popularity in a short period of time. Therefore, the further the procedure goes, the more evidence of the use of the trademark will be, which is conducive to proving that "the trademark has acquired distinctive characteristics through use".
Conclusion
The problem of "lack of display" is not only a trademark dilemma faced by the game industry, but also a common problem faced by all walks of life. With the rapid development of cutting-edge technologies such as the metaverse, artificial intelligence, and 5G, the forms of games in the future will become more diverse and three-dimensional, which makes the importance of trademark protection increasingly prominent. Although the use of a trademark will not be prohibited after it is rejected due to "lack of publicity", for enterprises, the use of unregistered trademarks is tantamount to "running naked" in the market, and it is difficult for enterprises to quickly and effectively protect their rights and interests when encountering infringement disputes. It is hoped that this article can bring some ideas and inspiration to the game industry when solving the problem of "lack of appearance", and at the same time, it also calls on the competent authorities to prudently apply the "lack of appearance" clause within the framework permitted by law, reasonably relax the review scale, and inject vitality into the innovation and development of intellectual property rights in the game industry.
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[1] Data source: Mozhilun, as of 2024.04.26
[2] Shang Ping Zi [2024] No. 0000014732 on the No. 68934371 "Funny Horse" trademark rejection review decision
[3] (2019) Zui Gao Fa Xing Zai No. 119 Zhile Software (Beijing) Co., Ltd. v. State Intellectual Property Office rejected the administrative judgment of reexamination (trademark) retrial
[4] Shang Ping Zi [2020] No. 0000089074 on the No. 37631991 "Radiation: Refuge ONLINE" trademark rejection review decision
[5] (2019) Jing Xing Zhong No. 7474, State Intellectual Property Office of the People's Republic of China v. Weiwu Group, Administrative Judgment of Second Instance Rejection Review (Trademark).
[6] (2019) Jing 73 Xingchu No. 406, Konami Digital Entertainment Co., Ltd. v. the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce, Administrative Judgment of First Instance Rejecting the Review (Trademark).
[7] Chapter 4.4.1 of the Trademark Examination and Trial Standards (2021).
[8] Shang Ping Zi [2023] No. 0000135717 on the No. 62106775 "Lying Flat Development" trademark rejection review decision
[9] Beijing Trademark Association, Guidelines for the Administration of Enterprise Trademarks (2023), 1.5
[10] (2022) Jing Xing Zhong No. 3138 Puzanjia Information Technology Nanjing Co., Ltd. v. State Intellectual Property Office rejected the review (trademark) of the second-instance administrative judgment
[11] Chapter 4.4.4 of the Trademark Examination and Trial Standards (2021).
[12] Guidelines for the Trial of Administrative Cases of Trademark Authorization and Confirmation of Trademark Rights of the Beijing Higher People's Court (2019) 9.7
Author of this article
Liu Zhichao
Beijing Sanyou Intellectual Property Agency Co., Ltd
Trademark Attorney
(This article only represents the author's point of view and does not represent the position of intellectual property)