Recently, the Beijing Higher People's Court ruled that Suning Holding Group Co., Ltd. (hereinafter referred to as Suning) did not apply for the registration number 175693 of the "SNGAMING and Picture" trademark (hereinafter referred to as the litigation trademark). Why did the trademark litigation last for 2 years without successful registration? What impact will it have on Suning E-Sports Club? What should rights holders pay attention to when applying for trademark registration?
The meaning of "GAMING" has caused controversy
On June 20, 2017, Suning filed a complaint with the Trademark Office of the former State Administration for Industry and Commerce (hereinafter referred to as the former Trademark Office) about "SNGAMING and its pictures" Application for registration of trademark. In March 2018, the original Trademark Office rejected Suning's trademark registration application on the grounds that the word "GAMING" in the disputed trademark could be translated as "gambling" and could easily have adverse effects when used on designated goods.
Suning is not reconciled to this. It believes that the "GAMING" in the disputed trademark means "game" and its use on designated goods will not have any adverse effects. Moreover, the disputed trademark is used on Suning. E-Sports Club means "e-Sports". Subsequently, Suning applied for reexamination to the Trademark Review and Adjudication Board of the former State Administration for Industry and Commerce (hereinafter referred to as the former Trademark Review and Adjudication Board). After review, the original Trademark Review and Adjudication Board also made a review decision to reject the disputed trademark registration application on the grounds that "GAMING" can be translated as "gambling" and is likely to have adverse effects.
In December 2018, Suning filed an administrative lawsuit with the Beijing Intellectual Property Court, insisting that the text part of the disputed trademark "SNGAMING and Pictures" contains the word "GAMING", and its meaning is not "gambling" but "E-sports", and when using the trademark in dispute, "GAMING" is used as the English word for "e-sports". The actual use has nothing to do with "gambling".
If the Beijing Intellectual Property Court believes after trial that a trademark logo or its constituent elements may have a negative impact on the public interests and public order of our country, it may be determined to fall under Article 1 of the Trademark Law. "Other adverse effects" specified in Item (8) of Article 10, Paragraph 1. In this case, the word "GAMING" in the text part of the disputed trademark contains the meaning of "gambling". If used on designated goods, it may have a negative impact on my country's social and public interests. When Suning uses the disputed trademark, it cannot rule out that the word "GAMING" contains the meaning of "gambling", which may still have a negative impact on my country's social welfare interests. In summary, the court rejected Suning’s lawsuit in the first instance.
Suning Company was dissatisfied with the first-instance judgment and appealed to the Beijing Higher People’s Court.
After trial, the Beijing Higher People’s Court recognized the original Trademark Review and Adjudication Board’s and Beijing Intellectual Property Court’s opinions that the use of the disputed trademark on designated goods may be harmful to my country’s social public interests and public order. A judgment conclusion that produces negative and negative impacts. At the same time, the Beijing Higher People's Court pointed out that when a trademark sign has multiple meanings or has multiple ways of use, one of the meanings or ways of use is likely to cause the public to think that it falls within the scope of Article 10, Paragraph 1, Item (8) of the Trademark Law. If circumstances are specified, the trademark may be deemed to violate the provisions of this paragraph, and the use of the trademark will generally not be considered. In this case, Suning intended to use the disputed trademark so that its actual meaning was not related to "gambling", but this does not exclude the word "GAMING" from having the meaning of "gambling". The disputed trademark may still have an impact on my country's It has a negative impact on social public interests and public order. In the end, the Beijing Higher People's Court did not support Suning's claim.
Experts analyze and resolve doubts
It is reported that the official Weibo avatar of Suning E-sports Club no longer uses the "SNGAMING and picture" logo, and has been replaced by the "SUNING and picture" logo. "The failure to register the disputed trademark is undoubtedly a great regret for Suning." Zhu Lixin, a lawyer at Beijing Hui Law Firm, said that for trademarks containing the English word "GAMING" with the meaning of "gambling", Suning can predict the trademark There is a risk of being unable to obtain registration approval because there have been previous cases in which JD.com’s application to register the “JDGamingBook” trademark was rejected for the same reason.
According to relevant English professionals, the English translation of "e-sports" is generally recognized as "ELECTRONICSPORTS" rather than "GAMING". As for the meaning of the word "GAMING", Sun Guorui, a professor at Beihang University Law School, believes that the word "GAME" has many meanings such as "games, sports, competitions, gambling", etc., but its main meaning in English is "gambling". ". Some English dictionaries give two Chinese equivalents of "gambling" and "gambling", while the "New English-Chinese Dictionary" only gives one Chinese equivalent of "gambling", indicating that "GAMING" is equivalent to "GAMBLING", which means "gamble".
“With the vigorous development of online games in recent years, ‘e-sports’ has also had a greater influence among young people, but it has not yet reached the level of traditional competitive sports such as football and basketball among consumers. Such a high popularity rate. Therefore, Suning’s argument for using the meaning of ‘e-sports’ in the disputed trademark is insufficient and unconvincing, and naturally cannot be supported by the court,” Sun Guorui added.
"Even if Suning's explanation is that the use of the word 'GAMING' is understood as 'e-sports', it is not appropriate for it to apply for registration as a prominent part of the trademark logo. Because e-sports As a common name for goods or services, sports cannot obtain exclusive protection through trademark registration. In other words, even if Suning Company successfully registers the trademark 'SNGAMING Jitu', Suning Company cannot prohibit others from using commercial products containing the word 'GAMING'. logo." Zhu Lixin said.
It is understood that before the second-instance judgment of the case was made, Suning had applied to register the "SUNING and Picture" trademark and actually used it in public places such as its official Weibo. "This new trademark is obviously more distinctive than the disputed trademark, and due to Suning's extensive use of the 'SUNING' logo in other fields, it already has a high reputation, and there is no trademark including adverse effects. Any situation that prohibits registration under the law,” Zhu Lixin said.
“There is indeed a broad understanding in practice regarding the application of the clause ‘harmful to socialist morals or having other adverse effects’ in Article 10, Paragraph 1, Item (8) of my country’s Trademark Law and explanation.” Sun Guorui said, “It is the responsibility of the national administrative departments and judicial organs to safeguard socialist morals and social public interests. Therefore, there are abundant resources for trademark registration applicants. When registering a trademark, remember not to touch the red line. It is better to avoid elements such as pornography, gambling, and drugs. ”
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