A sound trademark is a trademark where sound is used to perform the trademark function of uniquely identifying the commercial origin of products or services. The international representative "sound trademarks" include MGM's lion roaring at the beginning of its movies. Traditionally, excluding sound from the trademark is mainly because of the lack of visibility.
Streamlining trademark registration and protection in line with international standards, China amended its Trademark law in 2013, which allowed sounds to be registered as a trademark. 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, color combinations, sound or any combination thereof, that can distinguishing the goods of a natural person, legal person or other organization from those of others may be used for registration as trademarks.
To reflect changes brought by the revision of the Chinese Trademark Law in 2013, the State Administration for Industry and Commerce of China (SAIC) that has become part of State Administration for Market Supervision after Chinese government bodies were restructured in early this year, has published on 4 January 2017 a latest revision to the Trademark Examination and Review Guidelines. This revision provides criteria for examination of an application for registration of a sound trademark. Typically, the sound applied shall not be i) part of Chinese or foreign national anthem or similar rhythm with national anthem; or ii) religious music; or iii) features of violence or horror. In addition, a sound applied shall pose a distinctiveness, which is built up after long-term use. The trademark office has a power to require an applicant to present evidences proving the sound applied has been used on goods or services and such use has created a feature of distinctiveness. This implies that the key consideration of the trademark office is whether consumers form certain connections between a sound and the corresponding goods or service.
In February, 2016, about two years after trademark office start to accept applications of sound trademark, trademark office approved first sound trademark which is the signature tune of China Radio International. In August, 2016, the China Trademark Office approved the use of sound trademark "SOFY" on goods such as sanitary napkins by Unicharm, Co., Ltd, a Japanese company. It was a first sound trademark registered by a foreign company in China. It was reported that the Trademark Office had received more than 450 applications but only a few applications have been approved. This fact may reflect that traditional comprehensive examination of key elements may not suitable for sound trademarks as the inclusion of sound into trademark registration is an innovation, which raises a challenge to the Trademark Office. The recent lawsuit between Tencent and China Trademark Review and Adjudication Board (“TRAB”) demonstrated this challenge.
On May 4, 2014, Tencent Company filed an application for the mark “DiDiDiDiDiDi”, a notification sound upon arrival of a message during the running of Tencent QQ application, but its application was denied. Tencent appealed to TRAB who sustained the refusal on April 18 2016. TRAB took a view that i) the sound was too simple to have an originality; ii) the sound only represented one of functions that the software contained; iii) the sound could hardly distinguish 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 QQ’s application is a popular instant massager 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 product 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 criteria for examination of sound trademark.
On April 27, 2018, the Beijing Intellectual Property Court rendered a judgment in favor of Tencent. Beijing IP Court ruled that the evaluation of distinctiveness of non-traditional marks such as sound marks should take into considerations additional factors such as complexity of elements and duration of the sound 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 Court further ruled that through its long-term and extensive use, the software QQ has a very large market share with high reputation, which helps to enhance the distinctive character of the sound.
The public has come to immediately link such sound with Tencent’s QQ app, and thus 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 trademark, the examination of sound marks application may be more complicated and the Trademark Office may need time to find out and shape suitable approaches to dealing with examination of sound mark.