In a recent decision from the Beijing Intellectual Property Court, special consideration was given to Tencent’s “Weixin” trademark -- the Chinese name for popular social media app WeChat -- by refusing to register another software company’s “Weixin” mark, despite such other company having made its registration filing in good faith two months prior to Tencent’s release of WeChat in January 2011.

The Court has based its decision on Article 10(8) of China’s Trademark Law (2014), which prohibits trademark protection of any words that would be “detrimental to socialist morals or customs, or have other unhealthy influences.” According to the Court’s decision, authored by Judge Zhou Liting, the WeChat app has become so popular (an estimated 800 million users by Nov 2014) that registration of the earlier-filed “Weixin” mark would have an “unhealthy influence” on the market and the public’s recognition of WeChat. In other words, the potential confusion to so many WeChat users would negatively impact the public interest and “stability of the market order”, thereby resulting in an “unhealthy influence” to society. Notably, the court adduced evidence of WeChat’s popularity as of the time of judgment, as opposed to the Court’s customary approach of only recognising circumstantial evidence existing before the date of the trademark filing (which, in this case, was before WeChat had become known to the public).

The Court’s decision and Judge Zhou’s subsequent article (published via WeChat) has been the subject of much debate within the legal community in China. Judge Zhou’s opinion has received commentary for taking a practical approach and recognizing the impact of trademark law on social media and the internet generally, but also for appearing to be at odds with the basic “first-to-file” principles of the Trademark Law.

For a more detailed summary of the case in English, please refer to http://bit.ly/1GuGqOp. For a Chinese version of the Court’s decision and Judge Zhou’s follow up article, please seehttp://bit.ly/1GGpry5.