As early as May 1, 2014, China's trademark law, which was revised and implemented, has cancelled the visibility requirements for trademark registration, and for the first time, it has incorporated sound into the scope of trademark registration. There is no doubt that sound trademarks have great commercial value in the era of rapid communication of information. So far, China's trademark law has protected sound trademarks for nearly seven years and has still been widely concerned by the public.
According to the author's statistics, by the end of January 2021, 928 sound trademarks have been formally filed before the China Trademark Office. These sound trademark applications cover all 40 classes of goods and services under the Nice Classification System, except for class 2, class 6, class 13, class 19, and class 22.
From the "Statistical Chart of Sound Trademark Applications in China" made by the author below, it can be further notice that the Top 5 classes with more than 60 applications are classes 9, 41, 35, 38 and 42 in turn. It is worth mentioning that at present, most sound trademarks (723, accounting for 77.9% of the total number of applications) are filed by Chinese domestic applicants.
In China, the Part VI "examination of sound trademarks" of the 2016 version of 《Trademark Examination and Adjudication Standards》issued by the China Trademark Office clearly stipulates that sound trademarks should adopt the examination standards consistent with visually perceptible trademarks. In addition, it also stipulates in the form of generalization and enumeration: "if the sound only directly indicates the content, target-consumer, quality, function, use and other characteristics of the specified goods or services, it should be considered that this sound is devoid of any distinctiveness." Moreover, it is also clearly stipulated that "generally speaking, sound trademarks need to be used for a long time in the market before they could acquire distinctiveness." In addition, when sound trademark application comes to the substantive examination procedure, the examiner may issue a Notification of Examination Opinion, requiring the applicant to submit requisite evidence of the use of the sound trademark, and detailed explain the circumstances in which the sound trademark has obtained distinctiveness through use. The use of evidence needs to prove that the primary function of sound is not sound per se, but to indicate a source of designated goods or services, that is, when the relevant public hears a sound, they can involuntary associate it with a specific source.
Then, the question is how to understand the sound that only directly represents the content, target-consumer, quality, function, use and other characteristics of the specified goods or services, should be devoid of any distinctiveness? In this regard, we take the following two sound trademarks that have been rejected by the trademark office as examples:
- Shenyang Li Lian GUI Bacon Pancake Catering Center Co., Ltd.
applied for the sound Trademark No. 15482982 "Li Lian GUI
Bacon Pancake" which is designated to be used in respect of
the services in class 39.
- Zippo Manufacturing Company applied for the sound Trademark No. 34198632 "Ding; Zeng; Ka" which is designated to be used in respect of the goods "cigarette lighters" in class 34.
As for the sound trademark No. 15482982 of "Li Lian GUI Bacon Pancake", it specifically shows that it sings the seven Chinese characters "李-连-贵-熏-肉-大-饼" in C4/4 music beat with different tones. Therefore, its expression belongs to the descriptive phrases that are sung and exhaled only in ordinary intonation or simple melody. As to the sound trademark No. 34198632 "Ding; Zeng; Ka", it hears like a continuous single tone auditory effect produced by three different tones and intensities. It may be thought that the auditory effect reflects the mechanical sound of opening the cover, turning the flint wheel, and closing the cover when using the cigarette lighter. Therefore, the expression form of this sound trademark may be considered as a sound that is inevitable or unavoidable in the normal use of goods or the normal provision of services. As a result, the China Trademark Office holds that the two sound trademarks mentioned above are not distinctive enough in the sense of trademark law and then can not be registered.
Another question is how to understand that the sound trademarks need to be used for a long time in the market to acquire requisite distinctiveness? First of all, if the sound trademarks have just been put into commercial use or have not planned to enter the commercial field, it is difficult to claim that the sound trademarks have formed a certain market influence and have a high popularity, so it is impossible to obtain registration. Secondly, with the continuous innovation of modern advertising mode and new media technology, it is not impossible for many sound trademarks to have a certain popularity through a large amount of advertising investment in a very short time. But the problem is that gaining a certain popularity does not necessarily mean that the sound trademark has the "identification" and "distinctiveness" in the sense of trademark law.
In December of last year, Li Jiaqi, a well-known live commerce anchor in China, applied for the sound Trademark No. 45217353 "oh my God, 买它, 买它! " and was final rejected after being examined by China Trademark Office. It makes the discussion of the distinctiveness of sound trademark registration quickly brought to the most searched hashtags in China's Internet. This trademark belongs to the type of text-call sound trademark. According to the current practice of sound trademark examination in China, we should first pay attention to distinguish whether the calling text or the sound itself plays a real recognition role in the process of use. If the sound trademark only belongs to the form of calling words with ordinary intonation or extremely simple melody, the words are likely to be impressive and play a role of recognition in the process of use, while the sound is only regarded as the auxiliary background of words, or "the voice of words". Although this kind of sound trademark may be proved to be well-known by the relevant public after long-term or extensive use, it needs to be analyzed and judged according to the actual situation whether it is "voiced words" or sound itself as a trademark used to identify and distinguish the source of goods or services. As for the sound trademark No. 45217353, on the one hand, as stated in the text submitted at the time of filing, the sound "has a strong personal style", and has been widely used for a long time through the form of live commerce, which has been well known to a certain range of relevant public. Therefore, as far as sound itself is concerned, it is possible to identify and distinguish the source of goods or services. Of course, this still needs to be proved by submitting sufficient evidence of use. But on the other hand, for the text it calls, "oh my God, 买它, 买它!" The Chinese meaning of the word "God" in the English part of the trademark is indeed explicit. According to the current practice of trademark examination in China, it will still be classified as "obviously a sign harmful to socialist morality or other adverse effects", so it is forbidden to register and use as a trademark. For the Chinese part "买它，买它!", which has the meaning of "buy it, buy it!", only directly indicates the content and purpose of designated service items in class 35, so it has no inherent distinctive characters. In sum, this case just to be clear again that even if the sound in the sound trademark is originally created or first used by the applicant, it can not be taken for granted that it has distinctiveness as a trademark.
From the above, we can see that it is not easy to successfully apply for sound trademarks in China. According to the author's statistics, among the 928 sound trademark applications that have been formally accepted and examined so far, only 38 sound trademarks have been approved for registration (18 of which have been applied for registration by foreign applicants). The total ratio of sound trademark approval registration and application acceptance is only 4%.
From the above "Classification Statistical of Registered Sound Trademarks in China", it can be further noticed that the Top 3 classes with the largest number of registered sound trademarks include classes 9, 41 and 38, with a total of 31, accounting for 81% of the total number of registered sound trademarks so far in China. It can be said that with the development of modern science and technology, in addition to the traditional forms of broadcasting, sound trademarks are more widely spread, more convenient and more impressive through television, mobile phones, mobile terminal devices, Internet and other electronic media. It is with the help of listening to the sound trademarks again and again, as time goes on, by continuously strengthening the memory of the voice of the relevant public, generating association and establishing a unique corresponding association with the suppliers of goods or services, and finally successfully registered. This also fully proves the great value and influence of the use of information media and its business model for the expansion of sound trademark publicity. Obviously, this is worthy of the attention and serious treatment of Chinese and foreign applicants who want to obtain the sound trademark registration.
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