China: First Sound Trademark Case In China: Registrable But Only On The Product Actually Using The Mark

Last Updated: 29 January 2019
Article by Kaifang Wang

Tencent launched QQ chat software in 1999, since then the new message notification sound "Di Di Di Di Di Di" can be heard instantly once a new message arrives. Tencent began to apply for a trademark for the sound in 2014, which was rejected by the China Trademark Office (CTMO) and Trademark Review and Adjudication Board respectively for lacking distinctiveness. Tencent appealed. On Sep. 27, 2018, Beijing High People's Court made the final decision siding with Tencent and holding that QQ notification sound trademark is distinctive and registerable. This is the first sound trademark case adjudicated before a court.

According to the Chinese Trademark Law of 2014, sound becomes eligible for registration as a trademark. A sound trademark is a sound that is used to perform the trademark function of uniquely identifying the commercial origin of a product or service. The opening tune of China Radio International has been reviewed and approved as the very first sound trademark. Other examples include the Nokia tune and the "I'm lovin' it" jingle of McDonald's.

In this case, at issue is the distinctiveness of QQ notification sound. CTMO deemed the sound "Di" could be commonly found from many electric devices and could not be used to specifically distinguish the service provider. While Tencent argued that the sound was not just a simple repetition of "Di" by providing the court with a spectral catalogue, frequency spectrum and oscillogram of the sound, as well as 152 documentary evidence from the National Library of China, to prove that QQ notification sound had been used widely for a long time and could serve to distinguish the service provider.

Beijing High Court held that:

A specific mark may lack the distinctive feature required for trademark registration by itself. However, when the mark has been used for a long time and can function as an identifier, it may be registered in accordance with the provisions of Article 11, paragraph 2 of the Trademark Law of China. Since the salient features of this kind of mark is based on actual use, the registration of the mark shall be limited to the scope of the actual product or service applying the mark. In this case, QQ notification sound of "Di Di Di Di Di Di" itself is a common and simple repetition and lacks a distinctive feature for trademark by itself. However, this notification sound has been used on QQ software for such a long time that it has established a stable correspondence relationship with QQ instant messaging software. Tencent submitted sufficient evidence proving that this sound can identify the source of the specific service.

Beijing High Court therefore upheld in part the decision of Beijing Intellectual Property Court that QQ notification sound is registrable on the product already using it, while rejected its registration on other products not using it.

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