"Sound mark" has since 2014 been regarded as statutorily registrable in China. However, like the other non-traditional three-dimensional and color marks, registration of sound marks is oftentimes rejected for lacking inherent distinctiveness. While there are, so far, a few sound marks registered in China, including those owned by Nokia, Intel and Yahoo, it is interesting to take a look at an instance of a trademark application for the sound mark "DiDiDiDiDiDi" filed by Tencent Company (hereinafter referred to as Tencent) on May 4, 2014.
In 1999, Tencent launched its instant messaging product "QQ". In addition to using "QQ" and the penguin device "
" as trademarks, Tencent created a monotonous and repetitive ringtone "DiDiDiDiDiDi" and used it as a message notification sound. QQ messenger has been popular among consumers in China and one of the most widely used messaging tools in China, or probably even in the world . Understanding the importance of trademarking the brand signature sound, Tencent filed for registration of the sound "DiDiDiDiDiDi" for use upon "providing Internet chat room services, transmission of electronic mail services, message sending services, transmission of digital file services, providing online forum services, computer aided transmission of message and image services, transmission of greeting card online services, television broadcasting services, teleconferencing services, news agency services", etc. in Class 38.
Not surprisingly, the application was rejected by Trademark Office under State Administration for Industry and Commerce and the Trademark Review and Adjudication Board (abbreviated as TRAB). The two authorities both held that the "DiDiDiDiDiDi" sound, composed of a monotonous rhythm, could in no way serve as a source identifier for being destitute of a distinctive character. Dissatisfied with the Decisions rendered by the Trademark Office and TRAB, Tencent filed a petition for administrative litigation with Beijing IP Court, claiming that its sound mark has acquired distinctiveness through long-term and extensive use. After hearing the case, Beijing IP Court affirmed the distinctiveness acquired by the sound mark and overturned the Decision rendered by TRAB. TRAB then appealed the case to Beijing Higher People’s Court. This ultimate court upheld the Ruling rendered by Beijing IP Court and remanded the case to TRAB for review, resulting in registration of "DiDiDiDiDiDi" as a sound mark for use upon some of the services designated in Tencent’s trademark application filed on May 4, 2014.
As the "DiDiDiDiDiDi" sound is the very first sound mark registered in China after establishing a Secondary Meaning Affirmed by the Court, it is worthwhile to summarize below several perspectives reflected in the Rulings rendered by Beijing IP Court and Beijing Higher People’s Court:
- Regarding the registrability of the "DiDiDiDiDiDi" sound mark:
Both Beijing IP Court and Beijing Higher People’s Court considered the "DiDiDiDiDiDi" sound mark to be unregistrable for lacking distinctiveness with no regard to the acquired distinctiveness claimed by Tencent. However, the evidence submitted by Tencent shows manifestly that the "DiDiDiDiDiDi" sound has long been extensively used on QQ messenger with a high market share. Upon hearing the sound "DiDiDiDiDiDi," users of the QQ messenger can instantly associate it with Tencent’s product or services, suggesting that there has been established a firm connection between the "DiDiDiDiDiDi" sound and the QQ messenger in the public consciousness. Therefore, the "DiDiDiDiDiDi" sound mark designated for use upon "message sending services," among others, should be capable of serving as a source identifier.
- Regarding the functionality of the "DiDiDiDiDiDi" sound mark:
Beijing IP Court held that the "DiDiDiDiDiDi" sound is a created notification sound exclusively used for indication of the incoming QQ message; it is not a sound bound to pop up when using any messaging tool. As such, the "DiDiDiDiDiDi" sound mark is non-functional and is eligible for trademark protection.
- Regarding the scope of protection for the "DiDiDiDiDiDi" sound mark
Beijing Higher People’s Court opined that registration of the "DiDiDiDiDiDi" sound mark shall be limited to the services upon which the mark has been used, including "providing Internet chat room services, transmission of electronic mail services, message sending services, transmission of digital file services, providing online forum services, computer aided transmission of message and image services, transmission of greeting card online services." As for registration of the "DiDiDiDiDiDi" sound mark in respect of the three other designated services, i.e. "television broadcasting services, teleconferencing services, news agency services," it should be denied because Tencent has not used the "DiDiDiDiDiDi" sound on these services.
Sound marks can be registered in Taiwan as of 2003, about a decade earlier than in China. However, like the Chinese practice, sound marks are registrable in Taiwan only upon a showing of the distinctiveness or secondary meaning acquired through long-term and extensive use. It is thus essential for an applicant who wishes to register a sound mark, either in Taiwan or China, to put it to extensive use in relation to the concerned goods/services in the marketplace so as to augment the chances of success in registering the sound mark.
[1] According to the financial statements of 2017 released by Tencent Company, QQ had 783 million monthly active users. (http://tech.qq.com/a/20180321/030319.htm)