CASE 13 :
IN RE TRADEMARK APPLICATION FOR DIDIDIDIDIDI
◆ First instance: (2016) Jing 73 XingChu No. 3203
◆ Second instance: (2018) JingXingZhong No. 3673
Beijing Municipal
[Headnotes]
For equal treatment of market operators with different needs for trademark registrations, and for equal protection of trademark registrants of different types of marks already on the register, whatever the constituent elements of a specific trademark insignia, as long as conformable to the requirements under Article 8 of the Trademark Law, the same standards of examination should be followed in the trademark examining process, and unless specifically provided otherwise under the Trademark Law, no special treatment for sound marks or marks of any new types potentially available in the future.
[Synopsis]
Plaintiff: Tencent Technologies (Shenzhen) Co., Ltd. (Tencent)
Defendant: State Administration of Industry & Commerce/Trademark Review & Adjudication Board (TRAB or the Board)
The mark at issue here is the application No. 14502527 for DiDiDiDiDiDi (a sound mark) filed by Tencent on March 4, 2014 for use in connection with services of television broadcasting, information delivery and so on in class 38, which application was finally rejected by the Board for lack of distinctiveness. Tencent, dissatisfied, filed a lawsuit to first instance trial court for judicial review of the administrative proceedings.
The trial court found that the mark at issue has been used by Tencent for an extended period of time and extensively, and as a default reminder signal for new messages of QQ software, has formed interrelated identity with QQ software, establishing relative reputation as a sound mark in instant message area, and stable interrelationship with QQ software and Tencent itself, capable of serving to indicate source of services on the designated services of information delivery. The challenged decision finding lack of distinctiveness is not warranted by facts or legal foundation. Hence, the trial court vacated the challenged decision. The Board is dissatisfied and appeals.
The second instance court found the mark at issue is composed merely of the repetitive sound of “Di” which the relevant public under normal circumstances would not be able to recognize it as an indicia to distinguish sources of goods or services, and is therefore a mark without distinctiveness. A particular mark, when used on or in connection with particular goods or services, may lack distinctiveness required for trademark registration, but when it acquires such distinctiveness through use, it may qualify for registration under Article 11(2) of the Trademark Law. In this case, the evidence provided by Tencent shows that the mark at issue, the “DiDiDiDiDiDi” sound, after extended use with QQ instant messaging software, becomes recognizable for identifying the source of services. Since the mark has established distinctiveness in connection with information delivery services associated with QQ instant messaging software, it deserves preliminary approval for the above services. Nevertheless, since it is never practically used in connection with television broadcasting services, it did not acquire any distinctiveness over use. Therefore, the second instance court, on basis of correcting the relevant errors made in first instance decision, affirmed the decision below.
[Judge's Comment]
This is the first case involving sound mark to be reviewed in court. When the Trademark Law was amended in 2013, the original requirement for “visible indicia” as a necessary element for trademark was deleted, enlarging the scope of trademark subject matter, to take in for registration any indicia capable of serving to identify sources of goods or services.
In this case, the courts at both instances made findings and useful explorations on acquired distinctiveness for sound marks as well as the examining standards therefor. The second instance decision specifically pointed out that the examination of a mark with acquired distinctiveness must follow the principle of “particularization of goods or services,” to avoid generalization in determining distinctiveness or inductive reasoning. The settling of this principle offers valuable experience for registration examination of new types of marks. Since the mark at issue is a high-profile reminder sound for QQ instant messaging communication software, this case attracted wide attention from all circles.
（Translated by Zheng Xiaojun)
