Beijing court upholds trademark decision over a film's name

The Beijing Intellectual Property Court upheld a decision on a trademark and unfair competition lawsuit, banning the unauthorized use of a well-known game's name integrated into a film's title.

The case revolved around Chinese characters Xuanyuanjian, or Xuanyuan Sword, a trademark registered by online game maker Softstar in 2013 for movies and video gaming.

Softstar developed a classic role-playing game series Xuanyuan Sword. The award-winning series has earned the company a good reputation in the gaming industry and also aroused the interest of moviemakers.

The company signed a three-year licensing agreement with Shanghai-based moviemaker Tangren Media in 2010 and authorized trademarks and copyrights of parts of the series to Xiamen-based HY Media Group in 2014 for screen adaptations.

Yet before the authorized adaptations were aired, Softstar found that the movie Ancient Charms produced by Hainan Dashun Media was renamed Xuanyuan Sword Legend.

So it filed a complaint with the Chaoyang District People's Court in Beijing against Dashun, as well as Fantasy Media, which was responsible for advertising the movie through the Weibo account, Movie Xuanyuan Sword Legend.

The Chaoyang court ruled that the film didn't violate Softstar's trademark rights, but constituted unfair competition, so it ordered Dashun to pay 65,000 yuan ($9,190) in damages and other expenses.

Softstar appealed against the ruling requesting 1 million yuan in damages.

The appellant claimed that the name was misleading in indicating the film's origin and its connections with Softstar, so that Dashun and Fantasy Media infringed on the exclusive rights to use the registered trademark.

In response, the defendants said Xuanyuan was a well-known figure in traditional Chinese myths, and Xuanyuan Sword is a weapon that frequently appeared in novels and games.

The word was not created by Softstar and others should be allowed to use it in works, they asserted, adding that despite similar names, the movie and the game series have different characters, plots and trademarks.

Accordingly, the title would not mislead audiences about the links between the movie and the game series, they said.

Judges said that evidence presented by Softstar in court could not prove Xuanyuan Sword was a high-profile product in the film industry. Thus the name in question neither suggested Xuanyuan Sword Legend was produced by Softstar nor constituted trademark use.

However, Dashun's unauthorized use of the name of a well-known game series constituted unfair competition, according to the court.

Since Fantasy Media was hired by Dashun to promote the movie, the company is not held liable for the misconduct, the court said.

The appeal court ordered Dashun to stop using Xuanyuan Sword Legend as its film's title and pay 65,000 yuan in damages and other expenses.

"It is necessary for enterprises to protect their own legitimate interests while respecting others' intellectual property rights," said Cao Xinming, head of the School of Intellectual Property Rights at Zhongnan University of Economics and Law.

"Before film studios determine a movie's title, they can exercise due diligence through trademark search and works search to avoid possible mistakes."

zhanglinwan@chinadaily.com

(China Daily 10/31/2019 page17)