SOUND MARK REGISTRATION IN CHINA 21 THE LAWYER Could it be possible that the Tencent case is unique of its kind and says it be possible that the Tencent Could The high-profile case is billed as an advance of China’s trademark of case is billed as an advance The high-profile China’s conglomerate Tencent for the resourceful 4 years over it took First, when the 3rd amendment of the Trademark Law entered into effect, into entered Law amendment ofwhen the 3rd the Trademark was one ofChina the contracting parties that had reservations on ofAspects Intellectual Article on Trade-Related 15 ofAgreement the application “An that, required was once Property Rights It (TRIPS). for trademark visible mark…that registration be filed for any may of legal person can distinguish the commodities the natural person, the amendment, After of those or other organization from others.” letter, design, “word, registrable to but not limited include signs now numeral, three-dimensional symbol, combination of colors, and sound, of combination symbol, colors, three-dimensional numeral, trademark the first sound by Led of as a combination as well the above”. international (a state-owned Radio International China applied by only 2016, 14, 2014 and granted on May 4, on May radio broadcaster) the 15 of registration it to made over 546 sound mark filings have businesses)? Since China is not a common law country, and country, law is not a common China businesses)? Since make variables that could many are there case, case by examined are grueling legal Tencent’s to with But reference an application. or break let it just be said that registration ofbattles, not sound marks may of without resources. investment promising considerable be quite 2014 5, little about sound mark registration May Before in China? agencies and conference call services” irrelevant the permissible to call services” conference agencies and majority the on which of trademark use transmission” “message that out The court pointed specifically evidence had been built. itself by one item on the same not justify does character distinctive standards rigorous of the case distinctiveness, In acquired on another. over-generalization. avoid to should be set in order for examination the case itself look into a closer and the broader Yet procedures. excited. get too for ownersto not be a reason landscape may a registration secure on the software household ring for its to tone Along with other exhibits, up with. grew that the millennial in China of establish the court 152 pieces to to submitted literature Tencent for an the chances Then what are distinctiveness. acquired its mark’s mention start-ups (not to or other small and micro ordinary company shared the opinions that the applied that the the opinions shared The first-instance Beijing Court Property held in Intellectual Beijing The first-instance Yet since the day of the day since trademark 4th, registration application on May Yet However, the TRAB insisted on their opinion and appealed before on their opinion the TRAB insisted However, 2014, Tencent had been on a losing streak against the China Trademark against the China streak had been on a losing Tencent 2014, Board Adjudication and Review (CTMO) and the Trademark Office Affirming a victory deliver eventually (TRAB) in court. it could before the TRAB rejection, the CTMO’s 14502527) No.: 38 (Application in Class “Di Di Di Di Di Di” sound mark of required or distinctiveness creativeness bear any simple to is too registrable The sound was also viewed as a functional signs. signal of help identify the source albeit the the services, on QQ unable to Shang-Ping-Zi [2016] established popularity No.: (Docket software’s against filed a lawsuit Tencent 2016, 6, On December 0000035304). appeal. to the TRAB in an attempt of test that the six-beep tune passes the procedural favor Tencent’s Despite [2016] Jing-73-Xing-Chu-3203). registrability No.: (Docket The tech giant in China has long been using the ring tone to notify giant to been using the ring has long in China The tech tone QQ, named its instant-messaging messages on software incoming 200 million over QQ recorded in 1999, Launched a penguin image. when Tencent the time just before 2014, 11, April users on concurrent of date filed the sound mark application and the effectiveness the 1st, May since (effective Law of amendment third Trademark China 2014). its repetition of “Di”, the ring features a high pitch and a compact a high the ring pitch features “Di”, ofits repetition is also It unique. quite certain sound effects that are style and delivers rather of than default than functional as a result more user preferences has been acquired Distinctiveness not be altered. operations that could The popularity. and exceptional presence long-term QQ’s through with and the company sound with the software stable correspondence of functions the source identify to the designated serviceseffectively in Class 38. court’s Court maintained the lower which People’s the Beijing Higher eligible coverage judgment the mark’s part for the most but narrowed The [2018] Jing-Xing-Zhong-3673). for registration No.: (Docket news “TV broadcasting, i.e. court struck service out three items, Media CTC Legal CTC Legal Media CTC Legal ow many of you can recognize the by reading the reading the brands by of can recognize many you ow “ the Fanfare, The 20th Century Fox following staves? is It jingle... it” lovin’ “I’m McDonald’s Bong”, Inside Amid the growing interest, in recent years we have witnessed an have we years in recent interest, the growing Amid H the associated even the sounds and conjure may people how interesting just looking at the descriptionsimages or footages by without of This is the power sonic branding,actually hearing or seeing them. it strategya marketing the wonder for sought days these much after work. could Tencent’s this juncture, At of number increasing sound mark filings. sound mark against Chinese “Di Di Di Di Di Di” fight for its nerves and made it the trademark administrations hit the public’s a court in the jurisdiction.first sound trademark by heard case ever legal 20 age age P

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THE TRADEMARK LAWYER ayou L With her English and Chinese, plain and legal languages, her English and Chinese, With She is also a keen clients. to delivered can be effectively concepts ofcontributor review articles of and practice in China. law is a partner 2002. Nikita at HFL and has practiced in IPR since in handling variousShe has experience kinds of matters, disputed trademark unfair infringement, to, but not limited including, and anti-counterfeiting, copyright infringement, competition, she is matters, contentious Apart from contractual matters. rights on legal in riskalso experienced applications assessment, practice, and during the past years’ useful advices, providing by apply for to the world over all she has helped applicants from is of than 1,000 pieces Nikita more registration applications. at INTA Sub-committee Bulletin a member of & Practice Law Individual” “Ranked as and was nominated 2019, 2016 to since 1000 in 2017 and 2018. Review Trademark World by Shirley Ya LIN Ya Shirley at HFL and offers her expertiseShirley is an associate in dispute management and project trademark acquisition, resolution, she also gives legal disputes, addition to In legal translation. Min XUE Nikita contractual and matters. marketing on branding, helpful advice Résumés registrable in China. Shirley Ya LIN & Nikita Min XUE of HongFangLaw examine the tech examine the Nikita Min XUE of HongFangLaw LIN & Shirley Ya challenge against the Chinese trademark successful company Tencent’s give their take on this case and its implications, review administration and is unique and how sound marks could be case analyzing why the Tencent e: l 20 SOUND MARK REGISTRATION IN CHINA REGISTRATION MARK SOUND mark registration in China registration mark theory in sound relativity of The implementation of implementation The c ti r A

HFL SOUND MARK REGISTRATION IN CHINA 23 THE TRADEMARK LAWYER www.hongfanglaw.com [email protected] [email protected] In practice, it takes a lot of for brand create it takes work owners to hard practice, In attainable for issues of not easily sound marks are its a nutshell, In Contact: Hong Fang Law Fang Hong Contact: Email: Website: the stave within length but with proper significant for users feature the stave and they struggle must among these and identify, remember to segments of a final piece delivering satisfactory before creation. the services the Separated from or goods that a trademark on, relies the like repetitive, simple and even be plain, sound mark could but case with six short sounds of DI at the same frequency, Tencent that this sound battle proved the final victory the four-year after enough help users identify the to be also distinctive mark could ofsource and that is the most important the services spirit and goods, of trademark a registered law. by but it is still a type of to, trademarks be attended which kind to to general rules apply. As the trademark system in China develop, interested the trademarkAs develop, in China system general rules apply. now rate up to the success brand by owners should not be daunted in challenges for the administrations’ prepared well as long as they are non-functionality and distinctiveness. legality, ofterms their sound marks’ And but it education ” But with reference to As for the standards, reference could be drawn from Article 12 of be drawn from could reference for the standards, As file a a possible scenario is that applicants may On a further note, Distinctiveness could also be acquired, as revealed by the Tencent by as revealed also be acquired, could Distinctiveness Tencent’s grueling legal battles, Tencent’s let it just be said that registration of sound marks may not be quite promising without considerable investment of resources. easier for brand popularize the evidence a sound and collect owners to the second- as elaborated by However, of trademark use nowadays. should be of distinctiveness the scope acquired court, instance into the truly This should be taken to goods/services. relevant limited when using a sound and filing for its registration. account 3. Distinctiveness is the life ofDistinctiveness trademarks distinguish from for them to a good job in capturing do the audience’s Sound marks may one another. identifying to a when it comes but sometimes not as great attention, should be somewhat unique at the a sound icon, a brand’s As brand. when it is distinctive a sound is more general, In length. appropriate with associated Just designated the goods or services. not inherently devices apple is special on electronic as the bitten but rather not if ground giggle any used will break hardly a baby’s on farm products, pre-school nursery homes, products, baby advertise to or other transmission” “message unique on is not innately notification, of at the dawn adopted the information However, services in relation. heart presence, its long-term after people’s into era and hammered pinpoint serve to that could distinctiveness on has taken the ring tone design to the this as a lesson, take Brandthe services. owners may track be used and keep of to their sound marks are scenarios where sound marks registered The existing the applications as evidence. or social media. advertising via all been popularized broadcast, have it should be digital and literacy, accessibility Blessed with today’s CTC Legal Media CTC Legal the Trademark Law that regulates 3D trademark filings. Giving 3D trademark a little regulates that filings. Law the Trademark marks that sound should not be say may we twist the provision, to of if the nature registered from the goods, a sound resulting it is only a sound of or a necessary the goods for achieving effect, a technical principles, Based on the the goods. to value add a substantive sound to thoughts warranted are for filingssecond of clicking sounds simple or the ordinary on first aid services. mice siren on computer functional sounds and their original generic, mark work. combining if paragraph, in a preceding mentioned former the As part is also or mistake, not cause confusion others and the use does by adopted the rights challenge. should not be in a position to holder if too short and simple, it may not serve to distinguish. With these With distinguish. not serveif to it may short too and simple, is not easily distinctiveness that inherent clear it becomes examples, strategy the A deployable vocalize is to achievablemarks. for sound granted“SOFY” the first sound mark like brand name with a tune, to Corporation. the foreign applicant Unicharm as a variation sound of message “Di Di Di Di Di Di” The case. institutes etc. An epic orchestra piece is sure enoughis sure original, piece epic orchestra An etc. institutes could easily lose the audience before having the brand recognized. before easily lose the audience could “ is CTC Legal Media CTC Legal As trademarkAs rights is a form of be extended that could monopoly Another reason for rejection right reason Another off dispute to the bat and difficult indefinitely, registration of outlawing by functional or generic sounds, indefinitely, trademark will such other than the registrants, give people their use by of and hinder the development holders unfair advantages industry the functional sounds should not be registered. Therefore, and beyond. if registration invalidation into where enter they accidentally Even rights the not be maintained against should not be applicable, may parties. third use by reasonable for the mark’s registration if disputes arise later. Therefore, when a Therefore, registration if arise disputes later. for the mark’s sure copyrightable users should make as a trademark, is used work intact rights so. do to that they have Article 10 of the the country to effects and society. adverse is potential bans the trademark be Law use of sound that could any Trademark withfalsely associated a country a governmental (unless warranted), be perceived or may etc. Crescent the Red Cross, the Red organization, fillings of that follows national It or deceptive. as discriminative willanthems or theme songs without almost certainly be blocked permission from the nation or organization concerned. In more ordinary more In the nation or organization concerned. permission from conjure sounds that may filing avoid applicants should scenarios, or sound and vulgar words as obscene such perceptions, improper may elements that should also be paid to attention Special effects. Although the appreciation varying audiences. have different meanings to is still an culture transcend the language barrier, for sounds may in shaping the taste. important player 2. Non-functionality the CTMO and TRAB did raise issue about an case, the Tencent In on based sound, “Di Di Di Di Di Di” the function the signaled by their However, its registration. approve theywhich not to decided discussing here are but what we about distinctiveness, is more concern grounded on reining in monopoly and promoting social development. promoting and in monopoly on reining grounded 22 age age P

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1 t THE TRADEMARK LAWYER ayou L Facilitated by technical advances and motivated by Tencent’s success, Tencent’s by and motivated advances technical by Facilitated Most importantly, the applied sound mark the applied not infringe should importantly, Most Nevertheless, sound mark applications in China are not doomed sound mark are applications in China Nevertheless, e: l SOUND MARK REGISTRATION IN CHINA REGISTRATION MARK SOUND 22 1. Legality but a upon, case did not touch This is an aspect that the Tencent of General stone rulescorner for trademark a valid application. filings with but sound marks come special concerns. apply, upon prior for their just as ordinary rights, blocked be marks may similarity if prior to marks found exploiting they or invalidated are or rights rights, patents The trickier of copyrights, name etc. other’s is a sound markpart featuring a third-party in this regard work not be The situation may apply. may copyrightwhere protection risk work but could ruining all the hard examiners, by easily detected the number ofthe number witness sound mark filings may boost going forward. a the current trademark from away take to is much there Therefore, what kind of case as to sound marks is practice and the Tencent deemed eligible and what kind is less so for those who wish tap to a registrable sound mark our opinion, In resources. the scarce into and distinctiveness non-functional and distinctive, should be legal, or acquired. merits discussion on whether it is inherent more granted to a foreign applicant followed on August 21, 2016. It is “SOFY” is It 2016. 21, August on granted a foreign applicant followed to manufacturer a Japanese Corporation, Unicharm in Class 5 filed by of sanitary products. four years since 2014. Tencent was one of Despite the early applicants. Tencent 2014. since four years as such other message notifications judgments, favorable the above of (simulation sound) cough Ke” “Ke and Du Du Du” “Du Du Du still not blessed. that also rings users were QQ familiar to of the same chances securing enterprises foreign And have fail. to as long sound mark registrations domestic counterparts as their do, long Not standards. the examination up to as the marks applied are mark the first sound registration, International’s Radio China after c ti r A

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