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23 October 2020
Because of the lockdown caused by the pandemic which has blocked people from going into the real market to touch, feel and see the trademarks branded on the real merchandise, they tend to shop online more and “audible trademarks” become more and more important. In fact, they might play a critical role in the future compared to conventional trademarks.
As in the case of Tencent which filed for trademark application of its beeping sound which consists of a tone, “Di Di Di Di Di Di,” the notification ring for an incoming message of its popular instant-messaging and social network software named QQ, the China Trademark Office (“CTMO”) found that the sound depicted by the trademark in issue was not distinctive and rejected Tencent’s trademark application. In a review of the decision made on April 18, 2016, the Trademark Review and Adjudication Board (“TRAB”) upheld the CTMO’s rejection on the basis that the sound in issue was too simple, functional and indistinctive.
Tencent subsequently appealed to the Beijing IP Court (“IP Court”) against TRAB, seeking to overturn TRAB’s decision. In a judgement made on April 27, 2018, the IP Court held that the sound trademark in issue has acquired distinctiveness for the trademark purpose and should be registered. The final judgment in favor of Tencent made by the Beijing High Court was issued on September 27, 2018, which marks the first sound trademark registration being granted through a judicial proceeding in China.
Following the Beijing High Court’s decision in favor of granting the sound trademark to Tencent, the registration has been granted in 2019 and its social influence is still huge now because the Chinese general public barely knew that a sound could function as a trademark before the Tencent case.
Interestingly, sound trademarks entered into the “registrable trademarks” arena made its official debut with the amendment of the Trademark Law of China in 2013. As suggested by the low pass rate of sound trademark applications before the China Trademark Office ("CTMO"), the bar for establishing the registrability of sound trademarks has been set fairly high. After the amended Trademark Law came into force on May 1, 2014, the CTMO began to receive and examine about 749 applications for sound trademarks, while registrations were only granted to 27 among them by May 1st, 2020.
Most major jurisdictions allow sounds to be registered as trademarks, such as USA, Japan, and the EU.
“In order to be registrable as a trademark, a sound - either a musical or a non-musical sound, or a combination of both - should not fall under one of the prohibited categories, should be capable of distinguishing the goods or services of a party from those of others and should be non-functional,” says Yingying Zhu, Partner, Mingdun Law Firm.
She adds that in today’s dynamic business world in China, sound branding and audio marketing are playing an increasingly important role in identifying businesses.
“To make their brands stand out and recognizable, tremendous effort and time are being expended by brand owners so that products and services are not only visible but also audible by consumers,” she says.
However, the standard of test for non-functionality has not been well-defined either in the Tencent judgements or in the China trademark law, which remains to be further clarified by future judicial interpretation of the Chinese courts.
“The principle that trademarks should not be functional is of significant importance to the public due to the concern of awarding an everlasting monopoly to the functional attributes of a trademark,” says Zhu. “However, no clear standard has been established with regard to the functionality of sound trademarks in this important case.”
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