A recent decision of the newly established Beijing Intellectual Property Court in China in relation to the WEIXIN (微信) case, involving the Chinese internet giant Tencent, could be a sign of further erosion of the “first-to-file” principle in China. The Court refused an application filed by the Chinese company Trunkbow Asia Pacific (Shandong) Co.to register the mark “微信”, finding that its registration would lead to public confusion in view of the massive fame and reputation that Tencent had developed in that mark, even though Tencent’s fame and reputation had been developed after the filing of Trunkbow’s application. Nonetheless, the case may simply be an expedient anomaly as the Chinese courts are not obliged to follow precedent.
Tencent has extensively used the mark “微信” (WEIXIN) for its instant messaging services, known as “WeChat” in English, and the mark today is highly recognised throughout China. Trunkbow’s application was for the same mark in class 38 for message sending services and various other telecommunication services. However, Trunkbow’s application was filed not only before Tencent itself applied to register the “微信” mark but also before Tencent had even commenced use of the mark. Furthermore, there was no conclusive evidence that Trunkbow had filed its application in bad faith – Trunkbow claimed that it had independently developed the name “微信” in relation to a communications application.
The Court upheld the decisions of the China Trademark Office (CTO) and the Trademark Review and Adjudication Board (TRAB), finding against Trunkbow on the basis that the opposed application violates Article 10 (8) of Trademark Law of the People's Republic of China which states that words or devices “detrimental to socialist morals or customs, or having other unhealthy influences” shall not be used as trade marks. The Court held that in view of the public recognition and influence of Tencent’s mark, consumers would be confused as to the origin of the services if the opposed application was approved for registration, adversely affecting the market order which was not in the public interest. In making its decision, the Court appears to have relied on the catch-all category of “unhealthy influences” under Article 10 (8), departing from existing interpretations of Article 10 (8). It is important to note that the opposition had not been filed in Tencent’s name but instead by a Chinese individual purportedly representing the public interest. Had the opposition been filed by Tencent itself, the arguments relating to public interest may not have applied.
It is expected that Trunkbow will further appeal to the Beijing Higher People’s Court, which will have to consider the weight to be given to the public interest when deciding on the protection afforded to private rights in light of the first-to-file, or even first-to-use, principle. In the past, the public interest has not had much influence when deciding private rights. If upheld, it will certainly assist local as well as foreign owners of marks which have been used extensively in China and are extremely well known to the public.