In May of 2014, China's Trademark Law was amended to include sound marks into registerable trademarks. The Trademark Law stipulates that any sign capable of distinguishing the goods of a natural person, a legal person, or any other organization from those of another party, are eligible to serve as a trademark for registration application. These may includewords, graphic devices, letters, numerals, three-dimensional symbols, combinations of colors, sounds and/or a combination of any of these.
Upon the promulgation of the new regulations, Tencent Technology (Shenzhen) Co., Ltd. ("Tencent"), whose bid to register its prompt tone "didididididi" as a trademark was rejected by the Trademark Review and Adjudication Board ("TRAB"), decided to take TRAB to court, whereupon the Beijing Intellectual Property Court decided to hold a public trial on the matter. In its ruling, the court held that QQ's prompt tone was distinctive on account of the fact users could associate the prompt tone with QQ upon hearing it. As such, the prompt tone could be registered as a trademark. Therefore, the court decided to revoked TRAB's decision, ordering the defendant TRAB to re-examine the trademark application and render a new decision.
This case involved Tencent applying for a trademark on May 4, 2014 and having that trademark application rejected on August 24, 2015. The case was decided by the Beijing Intellectual Property Court on May 7, 2018, leaving a full four years since Tencent first applied for a trademark.
TRAB argued in court that QQ's prompt tone was relatively simple and lacked originality, adding that the evidence submitted by Tencent proves only that QQ software is well known, which is not sufficient to prove that the prompt tone was distinctive. TRAB believed that it would be difficult to ascertain the source of the service to which the tone belonged based on the tone and as such, the tone could not be registered as a trademark.
Tencent responded by claiming that QQ's prompt tone was in fact distinctive, simple and prominent, and as such possesses sufficient significance to be registered as a sound trademark. The QQ prompt tone, having been used in a wide variety of users over a long period of time, exists at a stage in which users will instantly associate the "didididididi" tone with QQ software upon hearing it. Furthermore, it should be noted that the overseas registered sound trademarks usually last for a much shorter duration (less than 3 seconds) than that of QQ sound mark. The sound is brief in duration and contains no vocal element. Given these facts, Tencent argued that QQ's prompt tone should be registerable as a trademark./
The Beijing Intellectual Property Court took a number of factors into account in its decision as to whether or not the QQ prompt tone was distinctive. Besides the basic principles, standards and guidelines governing whether or not a conventional trademark is distinctive, one must also take into consideration the duration and complexity of that sound mark’s constituent elements. One must also comprehensively examine whether or not the sound has a specific rhythm, melody or sound effect that can be used to identify the source of a good or service based on a certain sound. Despite the fact that the QQ prompt tone is solely composed of the same beep, these beeps are clear, repetitive and brief. They also possess a distinct rhythm and sound. As such, QQ prompt tone does not belong to any other simple sound.
Despite the fact that the disputed trademark in this case consists entirely of a complete beep sound which only lasts for a short period of time, the pitch of each beep is high and the interval between each beep is short, rendering the sound to seem continuous. The disputed trademark is clearly, continuous and short in duration. It has a specific rhythm and sound which is not commonly heard outside of QQ software. As such, the sound is not as simply as was described by TRAB in their judgement. Furthermore, it should be mentioned that the sound involved in the disputed trademark is the prompt tone for QQ software indicating that a message has been sent to a user meaning that it must involve the input of a user. One does not hear the sound without a user's input. With this, the defendant argued that the sound is not "functional."
Furthermore, the defendant argued that a sound markmust be of a certain duration in order to be considered distinctive. QQ software has been used in China since 1999. When it was first used, the QQ prompt tone had a great impact on QQ users, thereby rendering it easy for them to remember and to associate with QQ.
Besides this, Tencent also submitted evidence such as the "China Instant Messaging Research Report" by iResearch, its own annual reports from 2004 to 2015, its Guinness World Record for "the most users on a single instant messaging platform" for having reached a total of over 210 million users on a Chinese instant messaging system as well as records from the television series First Close Contact. The court considered all of the available facts: the long duration of the sound for the QQ software associated with the disputed trademark, its wide range of application, its large market share, the large number of areas involving the its use, the association between QQ's prompt tone, QQ software, the reputation that QQ's prompt tone has established in the area of instant messaging and the strong identification thereof. It is clear that the disputed trademark already serves to help identify the origin of the data messaging service in question.
Furthermore, the court held that providing value-added services or developing derivative products and upgrading technology for commercial purposes is a very common tactic for online companies. Tencent submitted 152 documents obtained from the National Library as well as a document from the Useit database entitled Forming QQ One Step at a Time: 1999 to 2015 and used these as evidence. These documents showed that between the time QQ entered the market and when Tencent applied for the disputed trademark, QQ had added online services such as chatrooms, email, online greeting card transfer and digital file transfer. And, it is through services such as these that QQ developed into a comprehensive online instant messaging platform. Although these services did not utilize the tone from the disputed trademark, these services as well as QQ's information transfer service are all components of QQ's comprehensive instant messaging platform; and, just as these services have become associated with QQ, the tone used for the disputed trademark has also become associated with QQ. Thus, the trademark is significant when it is used as a part of the above services.
Furthermore, the wide range of services associated with the disputed trademark should have the same degree of recognition and influence. Television broadcasting, news services and what is referred to as “information transmission” all fall under Category 38 according to the Nice Classification System. The explanatory note for the Table for Differentiating Similar Goods and Services for Class 38 goods reads “Class 38 includes mainly services allowing at least one person to communicate with another by a sensory means.” It must be noted that the aforementioned services are quite closely related to each other in terms of function, use and the service items themselves.
Furthermore, the competition between internet companies is actually one of competition between platforms. It is this competition that spurs innovation as it pertains to the structure of the platforms as well as the addition of services. As for Tencent, the television broadcasting services and news services provided under QQ’s instant messaging service platform serve as a part of its international development model. For the reasons previously explicated, be it the fact that QQ as well as its trademark are well-known, the fact that the disputed trademark was already well known as it can be readily associated with QQ software and the fact that the disputed trademark had been used for QQ's television broadcasting and news services, it can be concluded that the disputed trademark can be used to identify the source of the service for which it is used.
The Beijing Intellectual Property Court held that the contested sound trademark already could be used to identify the origin of the service for which it was used. Furthermore, the court held that the judgement rendered by TRAB in which the latter determined that Tencent's trademark lacked distinctiveness, lacked both a factual and legal basis. As such, the Beijing IP Court revoked TRAB's decision and ordered that agency to perform another trademark examination.