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China trade marks: Sound trade marks in China

A sound trade mark is a trade mark where sound is used to perform the trade mark function of uniquely identifying the commercial origin of products or services. Well-known sound trade marks include MGM's lion roar at the beginning of its movies. Traditionally, sounds have been excluded as trade marks because they cannot be seen.

To streamline sound trade mark registration and protection and to bring its regulations in line with international standards, China amended its Trademark Law in 2013 which allowed sounds to be registered as trade marks. Article 8 of the amended Trademark Law, which took effect on May 1 2014, stipulates that any signs, including words, graphs, letters, numbers, three-dimensional symbols, colour combinations, sounds or any combination thereof, that can distinguish the goods of a natural person, legal person or other organisation from those of others may be used for registration as trade marks.

In response to changes brought by the revision of the Trademark Law in 2013, the State Administration for Industry and Commerce of China (SAIC), which has become part of the State Administration for Market Supervision after the Chinese government bodies were restructured earlier this year, published on January 4 2017 the latest revision to the Trademark Examination and Review Guidelines. This revision provides criteria for examination of an application for registration of a sound trade mark. Typically, the sound applied shall not i) be part of the Chinese or a foreign national anthem or have a similar rhythm to a national anthem; or ii) be religious music; or iii) have features of violence or horror. In addition, a sound applied for shall possess distinctiveness, which is built up after long-term use. The China Trademark Office (CTMO) has the power to require an applicant to present evidence proving that the sound applied for has been used on goods or services and such use has created a feature of distinctiveness. This implies that the key consideration of the CTMO is whether consumers form certain connections between a sound and the corresponding good or service.

In February 2016, about two years after the CTMO started to accept applications of sound trade marks, the CTMO approved the first sound mark, which was the signature tune of China Radio International. In August 2016, the CTMO approved the use of the sound mark "SOFY" on goods such as sanitary napkins by Japanese company Unicharm. It was the first sound trade mark registered by a foreign company in China. It was reported that the CTMO had received 546 applications for sound trade marks up to April 30 2018 but only 15 applications have been approved. This fact may reflect that traditional comprehensive examination of key elements may not be suitable ~for sound trade marks as the inclusion of sound into trade mark registration is an innovation in China, which raises a challenge to the CTMO. The recent lawsuit between Tencent and China Trademark Review and Adjudication Board (TRAB) demonstrates this challenge.

On May 4 2014, Tencent filed an application for the mark "DiDiDiDiDiDi", a notification sound that comes up when there is a message on Tencent's QQ social networking app, but its application was denied. Tencent appealed to TRAB, which upheld the refusal on April 18 2016. TRAB took the view that i) the sound was too simple to have originality; ii) the sound only represented one of the functions that the software contained; iii) the sound could hardly be distinguished as the source of service because the beeping sound lacked distinctive traits.

Dissatisfied with TRAB's decision, Tencent filed a lawsuit with the Beijing Intellectual Property Court (Beijing Court) on the ground that i) Tencent's QQ app is a popular instant messenger service with the notification sound used to identify the arrival of messages; ii) the beeping sound has been used for a long time and consumers could directly link the sound to Tencent's QQ products or services; iii) the sound composed of six same signals, which was neither too long nor too simple, is distinctive enough to distinguish Tencent's service from other service sources; iv) TRAB has no legal basis to use originality as a criterion for examination of sound trade marks.

On April 27 2018, the Beijing Court rendered a judgment in favour of Tencent. The Beijing Court ruled that the evaluation of distinctiveness of non-traditional marks such as sound trade marks should take into consideration additional factors such as complexity of elements and duration of the sound trade mark. Although the sound element "di" is simple, the sound composed of six high-pitch "di" as a whole had sprightly, quick and continuous auditory perception, which is uncommon in daily life. As a result, it is not a "simple" sound.

The Beijing Court further ruled that through its long-term and extensive use, QQ has a very large market share and good reputation, which help to enhance the distinctive character of the sound. The public has come to immediately link such a sound with Tencent's QQ app, and thus it has acquired distinctiveness through use. Accordingly, holding that the sound can function to identify the messaging service, the Court revoked the TRAB's decision.

In conclusion, compared with traditional trade marks, the sound trade mark is a new trade mark category in China, which makes its application and examination much more complicated and can lead to some uncertainty. The CTMO may need time to explore suitable approaches to dealing with examination of sound trade marks.

Tom Zhang Linda Zhao

GoldenGate Lawyers
Suite 2311-12, The Spaces International Center No.8 Dongdaqiao Road, Chaoyang District Beijing 100020, China
Tel: +8610 5870 2028


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