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First Administrative Lawsuit On Sound Trademark

Source:GoldenGate

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 Court rendered a judgment in favor of Tencent. Beijing Court ruled that the evaluation of distinctiveness of non-traditional marks such as sound marks should take into consideration 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.  

GoldenGate Newsletter-August 2018