On April 20, 2016, the Beijing High Court made the finial judgment on the Weixin (Wechat in English) trademark opposition case, upholding the decision of the Trademark Review and Adjudication Board (TRAB), which refused registration of the trademark application for Weixin by a Chinese company Trunkbow Asia Pacific (Shandong) Co. The judgment essentially hints that Tencent Inc. owns the Weixin trademark and can continue using the Weixin trademark for its instant messaging service initiated in earlier 2011, which by the end of the third quarter of 2015, had obtained 650 millon monthly active users (for both Weixin and Wechat). Trunkbow applied for registration of Weixin trademark on November 12, 2010, about two months earlier than the initiation of Weixin instant messaging service by Tencent, on computer software and communication services.
The application was rejected by the China Trademark Office (CTO) on August 27th, 2011, as a third party Xinhe Zhang, possibly a strawman of Tencent, filed an opposition against it. The rejection was upheld by the TRAB. Trunkbow appealed.
The Beijing IP Court upheld the decision of the TRAB on the ground that, besides complying with the first-to-file rule of trademark registration, the public interests as well as the stable market order which has already been formed shall also be taken into consideration in the case. When conflict arises, the court shall strike a balance in view of the actual market and the facts of the case. The court held, in this case, it is more justifiable to protect the public interests than the interests of the applicant.
The Beijing IP Court's judgment triggered an earthquake in the trademark domain where the first-to-file rule has been taken as a headstone.
Trunkbow appealed the judgment to the Beijing High Court, which rejected the appeal and upheld the first instance judgment and the TRAB's decision, but on a different ground.
The Beijing High Court found that the Weixin trademark itself has no inherent distinctiveness. In particular, the Court found the Chinese character for "Wei" means "micro" or "little", when being used on communication services in combination with the Chinese character "Xin" which generally means communication, the relevant publics are likely to regard it as a kind of communication method which is shorter and more convenient than email and short message. In this case, Weixin is not likely to be a mark for identifying the source of services and therefore lacks inherent distinctiveness.
The Beijing High Court handled down the case in a smarter way than the first instance decision when denying the first-to-file rule since the inherent distinctiveness of Weixin is more difficult to argue. Yet no one had doubted the distinctiveness of Weixin since it was put into the market.
Elsewhere, Wexin has acquired secondary meaning by intensive use through the instant messaging services provided by Tencent and is now associated with Tencent. The big communication giant shall appreciate the leniency of the judges when it took such a dangerous strategy throughout the case.
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