from the title FIG IC Photo, OF: Youyunting
Can Nintendo defeat the animal squad association trademark squatters?
Recently, the animal Friendship Club game on the Nintendo Switch platform has become popular all over the world. The author searched the Animal Friendship Club logo at the National Trademark Office and found that in addition to the game developer Japanese Nintendo, some people in the country actually registered this trademark in several categories. , So today I will talk to you about whether Nintendo can beat the trademark squatters of the Animal Friends Association.
The old rules start with the summary. Readers who do n’t have the time just look at this paragraph: Although Nintendo has obtained the trademark registration of the Animal Senyou Club in the game-related category, the squatters are squatting for clothing, stationery and other games. Product trademarks and Nintendo trademarks belong to different categories. In this case, you can only apply for the recognition of well-known trademarks to obtain cross-category trademark protection. However, because the Animal Friends Games currently do not have a version number and cannot provide evidence of domestic use, it is impossible to prove that it constitutes a well-known trademark in the country, so it is not difficult to defeat the squatters.
First, the trademark application status of the Animal Forest Friends Association
The following is the current application status of the Animal Forest Friends Association trademark:
Second, why can the Animal Society of China not be recognized as a well-known trademark in China?
Generally, in the case of squatting the well-known brands, if the squatter ’s trademark application passes the examination and enters the announcement period, the most appropriate way for the squashed brand to protect its rights is to apply for the recognition of a well-known trademark , Request cross-class protection.
China’s “Trademark Law” stipulates: “Trademarks applied for registration of commodities that are different or not similar are copies, imitations, or translations of well-known trademarks that others have registered in China, misleading the public, which may lead to the interests of the registrant If it is damaged, it will not be registered and its use is prohibited. “
Unfortunately, it is very difficult to apply this right to protect the rights of the Animal Society Association. Although they are well-known in the world, they cannot submit evidence of use in China.
Because the Switch version of the Animal Friends Association has not yet obtained a version number, it has not yet been released in China. The “Beijing High People’s Court Administrative Guidelines for Trademark Authorization and Confirmation of Administrative Cases” clearly stipulates that: Prior trademarks have high visibility in other countries, regions, etc., but based on the actual use of the trademark application before the date of dispute, it cannot be relevant As is well known to the public, it cannot be assumed that the prior trademark has reached a well-known status.
Even though Nintendo or its domestic agent Tencent recently obtained the version number of the Animal Friends Association, there are still obstacles in identifying well-known trademarks: The “Regulations on the Identification and Protection of Well-known Trademarks” of the former State Administration for Industry and Commerce clearly stated: “To identify well-known trademarks, you should Provide materials proving that its registration period is not less than 3 years or that it has been in use for at least 5 years. “
These materials should also refer to evidence of domestic use in China. Considering that this game has only been online for a few months on the Switch platform, this is also impossible for Nintendo to submit.
Before the Animal Forest Friends Association, Nintendo named the game “Animal Forest” on other platforms. It was released abroad in 2001. Can they also use the name of Animal Forest to claim squatters Constitutes a similar trademark to the well-known trademark of “Animal Forest”?
According to the author’s inquiry, Nintendo has not applied for this trademark in China, so it cannot claim the protection of well-known trademarks of registered trademarks. Moreover, “Animal Forest” has not applied for a version number in China, so Nintendo cannot submit proof of use of the game, so it cannot apply for a well-known trademark.
Three, does Nintendo have any other legal methods to snatch animal senyu squatters?
According to the author’s experience, although there are some methods, but the specific application to this case may not be feasible:
1. Agent squatting
China’s trademark law has provisions prohibiting agents from registering trademarks. If Nintendo can prove that the cybersquatter was an agent or an affiliate of the agent, it can file a trademark opposition accordingly. However, in this case, the squatters are individuals, and most of them see the news to apply for trademarks, so it may not be feasible.
2. Trademark hoarding
The State Intellectual Property Office is currently carrying out activities to combat “trademark hoarding”, which is to crack down on a large number of applicants who apply for trademarks but do not use them. If the squatters register more than one trademark, Nintendo asks the Trademark Office to determine that the applicant ’s application constitutes trademark hoarding, which belongs to other improper means of registration of the trademark stipulated by the Trademark Law, thereby rejecting its application. However, according to the author’s inquiry, this cybersquatter only applied for this trademark in four categories. So this path is not feasible.
3. Violation of prior rights
The “Trademark Law” stipulates that: applying for trademark registration shall not damage the existing prior rights of others, so Nintendo can try to use this snipe squatter.
(1) The unique name right of well-known products
Nintendo may, according to the provisions of the “Anti-Unfair Competition Law”, determine that the Animals Association is an influential product name, and the cybersquatters have infringed its name rights. However, to meet certain influential standards, it also needs to be used in China for proof. As mentioned earlier, the game does not have a version number, so it is impossible to provide evidence of use. At the same time, even if the game has obtained a version number, we see that a court decision (2010) Chaominchuzi No. 30560 believes that the protection of the unique names of well-known commodities in China ’s Anti-Unfair Competition Law is actually an unregistered trademark protection of. According to the Trademark Law, the infringement of the exclusive right to use registered trademarks still requires the use of the same or similar trademarks on the same or similar products. The protection of unregistered trademarks cannot be protected across categories. Conditions are the same for similar products. In other words, Nintendo’s protection of the well-known product names of the game cannot be extended to clothing, sanitary ware, and leather goods.
(2) Copyright
Can the name of the Animal Forest Friends Association be protected by copyright? If it is possible, the trademark squatter infringes Nintendo ’s copyright. Although the words Animal Friends Association is indeed a relatively rare combination. However, in judicial practice, when the court determines that the registered trademark infringes the copyright, it requires higher originality of the copyright. According to the author’s experience, the phrase Animal Society will generally be found by the court to lack originality, and the possibility of obtaining copyright protection is very high. small.
Finally, Nintendo ’s current trademark application is sufficient for use in games, but because it does not apply for trademarks of peripheral products, it is still possible for trademark squatters to obtain animals in the categories of clothing, documents, leather goods, and sanitary ware. Senyou Association trademark registration. However, the squatters only obtain the name registration, in fact, the commercial value is not great. To be used in conjunction with the cartoon image in the Animal Friends Association, the product will be accepted by game fans, but if the squatters continue to take the ride when using the trademark, The use of cartoon characters in the Nintendo Animals Friends Games will constitute copyright infringement, and the court will judge it to stop infringement and compensate for losses.
author: Yunting, the Shanghai state law firm senior partner, intellectual property lawyers, Tel: 8621-52134900, Email: yytbest@gmail.com , This article only represents the author’s point of view.