Classic victory

Chinese firms are celebrating their first victory over a trademark dispute relating to Chinese classic novels.

On November 10, the Trademark Office of State Administration for Industry and Commerce refused 10 applications from G-mode, a Japanese gaming company. These applications attempted to register several Chinese classic novel titles as their trademarks, including Romance of the Three Kingdoms and Journey to the West.

The refusal is the result of a number of Chinese companies and associations' efforts to stop Japanese companies' copycat moves, which is a story almost as long as the epics themselves.

In February 2006, Liao Junming, general manager of Guangdong Red Badge Trademark & Patent Law Office, began looking into the trademark registrations of Chinese classic novels. The IPR veteran found that more than 40 trademarks involving Chinese classical works had been applied by three Japanese gaming companies. Of those, nearly 10 had been registered, more than 10 had been preliminarily approved and were in publication phase, the others were under examination.

G-mode's applications for registration were filed in 2004. What's more, as early as 2000, the Japanese gaming giant KOEI Co Ltd requested Kongming, a character in Annals of the Three Kingdoms, as its trademark. KOEI went on to apply for sanguozhi (which literally means "war memories of Annals of the Three Kingdoms"): All were approved by the Trademark Office without public notice. KONAMI, another Japanese gaming company, applied for huanxiang shuihuzhuan (literally means fantasy of Outlaws of the Marsh) in 2003, which was also successfully approved.

Annals of the Three Kingdoms is a historical book written in the third century, which was adapted into the famous novel Romance of the Three Kingdoms. Outlaws of the Marsh is one of the Four Great Classical Novels of China, featuring riots in the 13th century.

According to China's trademark law, trademark owners enjoy the exclusive right to use of the trademarks and are capable of accusing other entities of trademark infringement. In fact, KOEI had signaled trademark infringement warnings to some Chinese websites.

It is clear that the most likely victims are the domestic animation industry and the on-line game industry, which frequently utilize Chinese historic legends and martial arts novels as creative resources.

However, not a single company in the industry had taken action. Insiders say that the domestic animation and on-line game industries lacked professional evaluations about the results of the issue and say national cohesion is needed to protect the IPRs.

It was Zhongshan Okaman Trade Ltd, a Guangdong-based apparel company, which initiated a "stop campaign" in March 2006. The seemingly irrelevant company explained its motive as "a sense of social responsibility". "Preserving our culture heritage is shared responsibility of the whole society," says Guo Changqi, CEO of Okaman.

Okaman filed an opposition against five trademarks that have got preliminarily approval. If no opposition was filed after the three-month publication phase, the registration would be approved and a certificate of trademark registration would be issued. It also filed disputes applying to six registered trademarks, asking the Trademark Review and Adjudication Board to cancel them.

Echoing with Okaman's initiative, Zhejiang Television Artists Association, along with several animation and gaming companies in the province, also legally objected to the trademarks.

With Liao's help, several media outlets reported the "stop campaign", which triggered a heated public discussion about the intellectual property protection of Chinese classics in 2006.

Former vice-premier Wu Yi, who was in charge of intellectual property affairs, had expressed her concern about the case. In 2007, a CPPCC member submitted a proposal, demanding higher protection for the IPR of Chinese classics.

Then in November 2008 authorities refused G-mode's applications. Though they were not those opposed by Okaman, the company said it was encouraged by the progress and was determined to carry on the campaign.

G-mode is allowed to file an application for review within 15 days from receipt of the refusal notice and as of publication of this story it had not. G-mode was also not available for comment.

However G-mode and other Japanese companies have defended their applications, some with legal arguments nearly 3-centimeters thick, according to Liao.

"It is a clear sign that they are determined to exhaust all the legal procedures, from requesting the Trademark Review and Adjudication Board for a review, to appealing to People's Court, which could take years," said Liao.

The current Trademark Law does not include specific provision for Chinese classics. The only provision that could possibly hamper such registration is "those detrimental to socialist morals or customs, or having other unhealthy influences shall not be used as trademarks".

Liao says Okaman's reason for its concern is that the Four Great Classical Novels are household names in China and public resources, which do not allow for exclusive uses.