Case 3 Administrative dispute over review of rejected
[Basic Information]
Case No.: (2016) Beijing 73 Administrative First Instance No. 3203
(2018) Beijing Administrative Final Instance No. 3673
Plaintiff: Tencent Technology (Shenzhen) Co., Ltd.
Defendant: Trademark Review and Adjudication Board of the State Administration for Industry and Commerce
[Case Brief]
No. 14502527 trademark “DiDiDiDiDiDi” (sound) (hereinafter referred to as “the trademark in dispute”) was applied for registration by Tencent Technology (Shenzhen) Co., Ltd. (hereinafter referred to as “Tencent”) on May 4, 2014 for use on television broadcasting and message sending related service under Class 38. Trademark Review and Adjudication Board of the State Administration for Industry and Commerce (hereinafter referred to as “TRAB”) rejected the application for registration of the trademark in dispute on the ground of lacking distinctiveness. Dissatisfied with the decision, Tencent brought an administrative litigation with the court of first instance. The court of first instance held that the trademark in dispute, through the long-term and extensive use of the Tencent, formed a referential relation with QQ app as the default prompt tone of new messages of QQ app; it established high awareness in the field of instant messaging as well as stable congruent relation with QQ app and Tencent, therefore had the function of identifying the source of services in the designated message sending related service. Denial of its distinctiveness by the disputed decision of TRAB lacked factual and legal basis. Accordingly, the court of first instance ruled to revoke the disputed decision. TRAB was dissatisfied with the judgment and filed an appeal. The court of second instance held that as the trademark in dispute was merely composed of the same and repeated element “Di”, generally the relevant public was not apt to recognize it as a mark distinguishing the source of goods or services, thus the trademark in dispute belonged to marks lacking distinctiveness. A specific mark itself may lack distinctiveness as required by trademark registration on specific goods or services, yet where it has the function of identification through use, it may be granted registration in accordance with paragraph 2, Article 11 of the Trademark Law. In this case, evidence provided by Tencent can prove that the trademark in dispute “DiDiDiDiDiDi” (sound) had obtained the function of identifying the source of service through the long-term and extensive use on QQ instant messaging app. The trademark in dispute obtained distinctiveness on message sending service related to QQ instant messaging app, thus may be preliminarily approved on the above service. Nevertheless, the trademark in dispute had not been actually used on television broadcasting related service, thus did not constitute the circumstance of obtaining distinctiveness through use. Accordingly, the court of second instance affirmed the first-instance judgment on the basis of correcting mistakes thereof.
[Comments]
This is the first case concerning sound mark trialed by China’s courts. Amendment of the Trademark Law in 2013 deleted the original requirement that elements of a trademark should be “visible mark”, in which way expanded the scope of types of trademarks and allowed any mark having the function of identifying the source of goods or services to be granted registration as trademark. To equally treat market operators with various needs for trademark registration and equally protect owners of various types of granted trademarks, during the examination of application for registration of trademarks, any trademark, regardless of elements, shall be equally treated with the same examination standard as long as it conforms to Article 8 of the Trademark Law. Unless specially provided by the Trademark Law, sound marks and any other new type of trademarks that may occur in the future shall not be treated differently. In this case, courts of first and second instances conducted a useful exploration of the examination standard for distinctiveness of sound marks and the determination of obtaining distinctiveness through use. Judgement of the second instance made it explicit that examination for trademarks obtaining distinctiveness through use shall follow the principle of “specialization of goods and services” so as to avoid the generalization in the determination of obtaining distinctiveness through use. Clarification of such rule provided valuable experience for the examination of registration of new types of trademarks. This case attracted considerable attention from all sectors of society because the trademark in dispute was used as the prompt tone of Tencent’s QQ app which enjoys high public awareness.
photo from: 3lian.com
