Trademarking a Sound: The First Sound Trademark granted through a Judicial Proceeding in China
Trademarking a Sound: The First Sound Trademark granted through a Judicial Proceeding in China1
The Beijing High Court recently made a final judgement in favor of Tencent, finding that the notification beeping sound of the digital company’s instant-messaging and social network services is distinctive enough to be awarded a trademark registration. This marks the first sound trademark registration granted through a judicial proceeding in China. Significantly, the Beijing High Court’s judgement provides a good guidance with regard to the standard for establishing the acquired distinctiveness of a sound trademark. However, the standard of test for non-functionality has not been well-defined in the present judgement, which remains to be further clarified by future judicial interpretation of the Chinese courts.
Background
Sound trademarks entered into the “registrable trademarks” arena and made the official debut with the amendment of the Trademark Law of China in 2013. In order to be registrable as a trademark, a sound -- either a musical or a non-musical sound, or a combination of both -- should not fall under one of the prohibited categories,2 should be capable of distinguishing the goods or services of a party from those of others and should be non-functional.
The distinctiveness of a sound trademark could only be established upon proof of long-term and wide-scope commercial use of the trademark in China. With regard to functionality, under China Trademark Law (2013 Amendment), the only provision dealing with the evaluation of functionality is Article 12, which provides that where the registration of a three-dimensional trademark is applied for, it shall not be registered if it is only a shape resulting from the nature of the goods, a shape of the goods necessary for achieving a technical effect, or a shape to add a substantive value to the goods. The trademark law however remains silent upon whether there is a similar test with respect to other non-conventional trademarks, such as sound trademarks. The legal consensus is that this constitutes a loophole in the trademark law and that functional sound trademarks would be subject to the same exclusions or limitations as functional three-dimensional trademarks. Applying the test for three-dimensional trademarks in the realm of sound trademarks, it is reasonable to deduce that a sound shall not be registered if it is only a sound resulting from the nature of the goods, a sound of the goods necessary for achieving a technical effect, or a sound to add a substantive value to the goods.
As suggested by the low pass rate of sound trademark applications before the China Trademark Office ("CTMO"), the bar for establishing the registrability of sound trademarks has been set fairly high. After the amended Trademark Law came into force on May 1, 2014, the CTMO began to receive and examine about 546 applications for sound trademarks, while registrations were only granted to 15 among them.3
The Tencent Case
On May 4, 2014, Tencent filed for trademark application of its beeping sound which consists of a tone, “Di Di Di Di Di Di,” the notification ring for an incoming message of its popular instant-messaging and social network software named QQ. The application was filed in Class 38 designating various service items including TV broadcasting, news agencies, message transmission, conference call services, online chatting forums, computer-aided message and graphic transmission, internet chatting rooms, online e-card transmission, digital files transmission and email services.
The CTMO found that the sound depicted by the trademark in issue was not distinctive and rejected Tencent’s trademark application. In a review of the decision made on April 18, 2016, the Trademark Review and Adjudication Board (“TRAB”) upheld the CTMO’s rejection on the basis that the sound in issue was too simple, functional and indistinctive.
Tencent subsequently appealed to the Beijing IP Court (“IP Court”) against TRAB, seeking to overturn TRAB’s decision. In a judgement4 made on April 27, 2018, the IP Court held that, “in judging whether a sound trademark is distinctive, consideration should be given to the existence of a special rhythm, melody or sound effect that could acoustically identify the product and its origin…The beeping sound in issue has its special traits of a sound with high-pitched, continuous and speedy elements accompanied by unique rhythm and sound effects, which makes it uncommon in daily life, therefore, it is not a ‘simple sound’ as found by TRAB.” Furthermore, the IP Court found that, “though the beeping sound signifies the incoming of a new message, such sound was the result of an artificial setting, rather than an inevitable technical effect caused by the operation of the QQ software, thus it is non-functional.” In addition, the IP Court affirmed that, “the evidence provided by Tencent could prove that the sound in issue has been in commercial use since February 1999 in China for the popular QQ software, a unique app with all the popular chatting and social functions. The QQ software has a remarkable market share with high reputation, hence a unique connection has been established between the beeping sound and the QQ software as well as with Tencent.” Accordingly, the IP Court held that the sound trademark in issue has acquired distinctiveness for the trademark purpose and should be registered.
After losing the battle before the IP Court, TRAB appealed to the Beijing High Court (“High Court”) but the High Court ruled to support most of the major findings of the IP Court except that it truncated three service items including “TV broadcasting, news agencies and conference call services” from the list of services that Tencent applied for, on the ground that the truncated items had not been used by Tencent to develop a distinctive feature. The final judgment5 in favor of Tencent made by the High Court was issued on September 27, 2018, which, as mentioned above, makes Tencent’s beeping sound the first sound trademark registration granted through a judicial proceeding in China.
Discussion
Both the IP Court and the High Court devoted a fair amount of time in their judgments to analyze that distinctiveness has been acquired through Tencent’s commercial use of its sound trademark in China for a long period of time. The courts’ standard has been clear: for a sound trademark to be registrable, the applicant must show continuous use of the mark in commerce, and the capability of the mark to associate the product with its origin. Furthermore, the IP Court suggested in its judgment that non-functionality should be a requirement for registration of a sound trademark,6 however, neither the IP Court nor the High Court adequately explained why Tencent’s sound trademark in issue managed to pass the non-functionality test with its apparent functional attributes.
In its present judgment, the IP Court held that the sound in issue was non-functional because it was the result of an artificial setting, not an inevitable technical effect caused by the operation of the QQ software. This perhaps is not a very convincing explanation because in the cyber world virtually every sound is the result of an artificial setting, since the operation of any software is inherently silent and would not invoke any sound unless being artificially set up to have a sound. Just because the beeping sound was artificially set up by Tencent does not necessarily mean that its competitors have no competitive need to set up the same beeping sound for a similar type of software to achieve the same technical effect. As this “artificial setting” test fails on its face, the question then becomes how functional that beeping sound of Tencent is when produced by the software QQ. If the sound is purely functional because it is merely the sound produced by any social communication software of that type to indicate the incoming of messages, registration should have been rejected, no matter how well-known or distinctive it has become.
As a notification beeping sound, the “Di Di Di Di Di Di” ring of Tencent appears to be functional for a social communication software because it performs the job (perhaps more effectively than other types of rings) to notify the user that a new message is coming and awaiting to be answered. The ring has been so commonly used by similar software that most mobile phone users in China could open the sound setting software in their mobile phones to locate and install a similar notification ring for incoming text messages, which indicates that the sound of beeping could be resulted from the nature of social communication software and could be essential to the use or purpose of such type of software. It follows that the granting of registration to Tencent for such a ring is likely to hinder competition in the relevant market as competitors would be prohibited from using identical or similar rings.
Indeed there are adequate alternatives to the notification feature of Tencent’s beeping sound that would allow its competitors to make their software function just as effectively, for example, by replacing the “Di Di Di Di Di Di” ring with another one in the sound setting menu. However, even though there are abundant alternatives available in the marketplace, a particular product feature may still be functional and not eligible for trademark protection.7 In another word, existence of comparable alternative rings does not in itself transform a functional sound into a non-functional sound. The key test, which has never been clarified by the courts, is likely that whether such ring is essential to the use or purpose of similar types of software.
The principle that trademarks should not be functional is of significant importance to the public due to the concern of awarding an everlasting monopoly to the functional attributes of a trademark. However, this issue has not been adequately addressed by the courts in the present case.
Conclusion
In today’s dynamic business world in China, sound branding and audio marketing are playing an increasingly important role in identifying businesses. To make their brands stand out and recognizable, tremendous effort and time are being expended by brand owners so that products and services are not only visible but also audible by consumers. Significantly, the present case will provide a good guidance with regard to the types of evidence to be produced to the trademark examination authorities to establish the acquired distinctiveness of a sound trademark. However, the standard of test for non-functionality has not been well-defined either in the present judgements or in the trademark law, which remains to be further clarified by future judicial interpretation of the Chinese courts.
Footnotes
1) The author gratefully acknowledges partner Glenn Gundersen of Dechert's Philadelphia office, who made valuable suggestions to this article.
2) As set forth in the Trademark Examination and Review Guidelines (2017), prohibitive sounds include: i) melodies that consist of Chinese or foreign national anthem or those with similar rhythm, ii) religious music or iii) sounds with violent or horrifying characteristics.
3) http://ip.people.com.cn/n1/2018/0524/c419849-30011896.html.
4) Beijing IP Court: (2016) Jing 73 Xing Chu No. 3203.
5) Beijing High Court: (2018) Jing Xing Zhong No. 3673.
6) After the Beijing IP Court made the present Tencent judgement, it is clear that applying for a sound that is well-known and distinctive will not in itself guarantee registration, as the sound should also pass the non-functionality test.
7) See Beijing High Court’s judgement under (2010) Gao Xing Zhong Zi No. 131. Here is a brief description of the case: Emerson Electric Co. filed for a clover design 3D trademark for the goods of sealing side buttons (machinery parts). The CTMO found that the shape depicted by the trademark was necessary to achieve a technical effect for the goods designated, namely, sealing side buttons (machinery parts). As a result, the CTMO rejected Emerson’s trademark application. Despite the fact that Emerson was able to provide many alternative designs produced by itself or its competitors during the first instance proceeding, the rejection was later upheld by the Beijing High Court.
