Successful opposition case of Korea’s famous network game “冒险岛”
When mentioning "冒险岛", you must be able to recall memories of childhood. Do you remember the feeling of anxiousness when you were chased by bees?
This game is a 2D horizontal scrolling game created by the famous Korean game developer Nexon Korea Corporation. In many 2D horizontal games “冒险岛” is loved by many players with its lovely style and smooth operation and task system, becoming the leader in 2D horizontal scrolling games.
However, as the popularity of "冒险岛" has increased in China, more and more people who attempted to use the game to gain improper interests began to copy their trademarks. Today, we will discuss the application of the principle of good faith in the opposition action through the popularity and originality of the trademark “冒险岛.”
Kangxin Partners, P.C., acting on behalf of Nexon Korea Corporation (“the opponent” hereunder), filed an opposition against the trademark (No. 18108767) (“the opposed mark” hereunder) on January 20, 2017. The opponent considers the opposed mark is a copy and imitation of their well-known mark (No.11569882) (“the prior mark” hereunder). We filed the opposition mainly on the basis of Articles 7, 10.1.7, 13.3, 32, 44 of the Chinese Trademark Law. We argued that 1) the opposed mark is a copy and imitation of the opponent’s prior famous mark, 2) the registration of the opposed mark violates the principle of the good faith, 3) the registration of the opposed mark will cause confusion and misunderstanding over the origin of the goods in relevant public and may cause damage to the opponent, thus the opposed trademark should not be approved for registration.
The prior mark is a 2D horizontal scroll web game produced and developed by the Korea’s famous game developer Nexon Korea Corporation. The game was put into online on July 24, 2004 and Shengda network is responsible for the operation of it, which is well praised by broad player in China and won several prizes. For example, the prior mark of the opponent has won successive awards of the top ten popular leisure network games from the year of 2008 to 2011. The opponent and mark have been well known by the relevant consumers who are interested in games through the media publicity.
Kangxin Partners, P.C., acting on behalf of Nexon Korea Corporation (“the opponent” hereunder), filed an opposition against the trademark (No. 13698972) on January 20, 2017, and mainly argues that the application of opposed mark infringes the prior trademark right of the opponent.
Below are details of the opposed mark:
The Opposed Mark
October 20, 2015
Meat; Egg; Canned aquatic product
The main argument in this case is whether the application of the opposed mark infringes the prior trademark right of the opponent and violates the principle of the good faith in provisions 7 and 30 of the Chinese Trademark Law. We argued that:
1.The opposed mark is a copy and imitation of the opponent’s prior mark
Judging whether the opposed mark is a copy or imitation of the opponent's prior trademark, the similarity between the two trademarks should be taken into consideration. We have comprehensively analyzed the similarity between the opposed mark and the opponent's prior trademark in the composed elements and overall appearance, the arrangement of device and the arrangement of words. Since the two trademarks are basically the same in terms of design style and design manner, it is impossible to distinguish two trademarks without careful comparison.The opposed mark can be considered to be a black and white version of the opponent's prior mark. Two trademarks with such a high degree of similarity cannot be convinced if the opposed mark was original created by the opposing party. Above facts prove that the opposed mark is a copy and imitation of the opponent's prior trademark.
2.The coexistence of the opposed mark and the opponent’s prior mark will damage the interests of the opponent and the relevant consumers because the opponent’s prior mark already has a high reputation and influence.
In this case, it is demonstrated that the opponent’s prior trademark has achieved high popularity and influence before the date of the application of the opposed mark through collecting and collating the evidence provided by the opponent and those we searched on the Internet, including the introduction of the opponent and his prior trademarks, the reports of the conference held by the opponent, the game player's discussion to the opponent’s prior mark, the advertisement jointly issued by the opponent and a well-known Chinese company, the press releases of the opponent’s prior mark through different online medias, and the awards received by the prior mark.
3.Based on the reputation and influence of the opponent’s prior mark and the fact that the opposed trademark is a copy and imitation of the opponent’s prior mark, the registration of the opposed trademark clearly violates the principle of good faith.
4.The coexistence of the opposed mark and the opponent’s prior mark will confuse and mislead the relevant consumers over the origin of the goods.
Since the opponent and his prior mark have provided game services for ten years and they have received many awards, the popularity and influence are already high. Based on this popularity and influence, the coexistence of the two trademarks will confuse the consumers and thus the interests of the opponents and related consumers will be damaged.
On January 26, 2018, the CNIPA (previously known as CTMO) issued the decision after examination, holding that:
1)The evidence provided by the opponent proves that the opponent’s prior trademark has obtained certain reputation and influence over the designated services before the filing date of the opposed mark.
2)The opposed mark and opponent’s prior trademark are highly similar in terms of composition, graphic design, and overall visual effect.
3)The application for registration of the opposed mark has the intention of copying or imitating the opponent's prior mark, which is contrary to the principle of good faith.
4)The coexistence of the parties’ marks will confuse and mislead the consumers over the origin of the goods or services, and the legal interests of the opponent will also be damaged.
Thus, the opposed mark should not be approved for registration.