Record of the Three Kingdoms is a Chinese history book that recites the events happening during the period from the end of the Eastern Han Dynasty up to the unification of the three kingdoms by the Western Jin Dynasty (184 to 220AD). As the history contained in this history book is well-known in China and Japan, different kinds of plays, comics, animations and video games derived from this period of history have been all-time favourites.
Tecmo Koei Games, a Japan-based company (hereinafter referred to as Tecmo Koei) is a famous video game company. In 1985, Tecmo Koei developed and released a game software by the name of Record of the Three Kingdoms (in Chinese) based on the historical storyline of the Record of the Three Kingdoms. These Chinese characters were then registered in 2003 for use upon a wide range of goods and services, including "optical disks and game program cartridges pre-recorded with computer game programs" in Class 9, "electronic game devices not for use in connection with television or computer" in Class 28, and "providing online accessible computer games for international exchange; providing online games via network" in Class 41.
In 2016, two years after 9Splay Entertainment Technologies (hereinafter referred to as 9Splay) released a video game called Record of the Three Kingdoms–
Unification of the World (in Chinese) by also following the historical storyline of the Record of the Three Kingdoms, the Taiwan subsidiary of Koei Tecmo filed with the IP court a civil tort action against 9Splay. Apart from claiming copyright infringement, it averred that 9Splay had committed trademark infringement for using Record of the Three Kingdoms–Unification of the World (in Chinese) in its promotional materials, a phrase similar to its prior registered Record of the Three Kingdoms (in Chinese) mark.
The IP court found the defendant liable for copyright infringement but interestingly, the plaintiff's claim for trademark infringement was denied for the following reasons:
1. According to the rules set out in the "Test for Trademark Distinctiveness" published by the IP Office, when a novel or story is adapted as the content of an electronic toy, with the name of the novel or story being used as an insignia to identify goods or services such as "electronic game cassettes, magnetic disks, and optical disks" or "online game services", lay consumers would consider said insignia as a description of the content of the goods or services, rather than a trademark. As such, the mark "Record of the Three Kingdoms (in Chinese)" actually does not possess distinctive quality for registration.
2. It is mandated in Taiwan's Trademark Act that "[a] registered trademark proprietor shall not prohibit a third party from using his own name, or any indications relating to the name, shape, quality, intended purpose, place of origin or being descriptive of goods or services per se, provided that such use is not intended as a trademark use and is in accordance with honest practices in industrial or commercial matters." Since the defendant neither highlighted "record of the three kingdoms (in Chinese)" nor marked the phrase "Record of the Three Kingdoms –Unification of the World (in Chinese)" with the ® symbol when adopting it as the name of its video game, such a phrase may be perceived by consumers as being used for the purpose of describing a role-playing game based on historical figures of the three kingdoms period. As the defendant had no intention to use the phrase as a trademark, its use of the phrase in an ordinary manner should not be restricted by another's trademark right.
It can be derived from this case that, even if a trademark formed by the name of a history book or novel is registered, the right thus obtained is restrictive in one way or another. In other words, when a third party uses the name of a history book or novel to describe the content of a product or service in an ordinary manner, such use is not tantamount to "trademark use" defined in the Trademark Act and thus does not constitute trademark infringement.
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Julia YM Hung |
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