By Albert Chen
By the local news report in China, at the settlement of the dispute between Blizzard and Valve on the DOTA trademark (Please CLICK HERE for our past post on it), a new battle over “DOTA” has begun. A local registered company in Shandong Province in East China recently lettered to online shopping website like Taobao.com, claiming it has full right to use the trademark of “DOTA” in class 25, which covering clothes, shoes and hats. Also, the company presented the certificate to the trademark right with the letter. Therefore, the company accused the websites the infringement for selling the clothes with DOTA marked on it. For the news, we retrieved the database of Trademark Office of PRC, and by the check, the trademark does belong to Wang Yongbao, the name indicated on the certificate, while it remains unknown through which methods does the company get the license to use the trademark from Wang. Meanwhile, it also comes to our attention that, in addition to Wang, the trademark of DOTA has been registered under other individuals or units’ name in different classes, involving Zheng Miao in Class6 and Ningbo Jiangbei District Dong Tai Clothing Co., Ltd., in Class 26, etc.
From the retrieval, it could be concluded that the trademark owner of DOTA is facing obstacles in using and developing the trademark in China, which, however, is not an isolated case in China, therefore we would like to share our tips on the trademark application basing on the DOTA and our past practices.
By the current trademark classes, the classes directly involved with the online game is the Class 9 and 41, and the former the class refers to the computer program and software, and the latter class mainly focuses on the online game and entertainment. Surely, for the commercial purposes, a game could not only be run for its operation, but includes the propaganda and periphery development for greater benefits. Therefore, including the aforesaid Class 9 and 41, in the process of commercial operation and development of the online game by the game developer and the game operator, the following classes shall be covered:
Class 9, including computer program, software, etc;
Class 16, including paintings, picture poster, paper card, playing card, stationery article, etc;
Class 25, including clothing, shoe, hat, glove, socks, scarf, etc;
Class 26, including ornaments, etc;
Class 28, including entertainment apparatus, toy, chess, card and other auxiliary appliance (without the paper cards), etc;
Class 29, 30, including snacks, food, etc;
Class 38, including the service of radio or TV program broadcasting, service of communication;
Class 41, including online game, online entertainment, etc;
Class 42, including computer programming, etc.
Surely, the above classes are concluded and summarized from the common commercial development aspect, and in the practices, there could be other ways for the game developer and operator to conduct the commercial development, in which case other classes of the trademark may be involved.
We will post another essay associated to the topic discussed in this article, introducing you Tencent’s trademark application strategy in China to avoid the unnecessary legal risks and troubles.
For further information, please contact the lawyer as listed above or through the methods in our CONTACTS.
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