Trademarking a Sound in China

Trademarks are not limited to words or drawings and can include sensory marks such as colors, smells and sounds. In the US, the USPTO recognizes sounds as trademarks if the sounds make you think of a company’s product or service. MGM’s roaring lion, Homer Simpson’s D’OH, and 20th Century Fox’s fanfare are all famous sounds that are also registered trademarks in the US.

In China, sound marks are a somewhat new concept. China’s 2014 Trademark Law Amendment made it possible to trademark a sound. The law provides that any signs, including words, graphs, letters, numbers, three-dimensional symbols, color combinations, sound, or any combination thereof, that can distinguish the goods of an entity from those of others may be registered as trademarks.

In practice, however, not many sound marks have been registered. Less than 10% of sound mark applications have been approved for registration in China.

According to China’s Standards for Trademark Review and Examination (“Standards”), a sound mark is a trademark formed by a sound that can be used to distinguish the source of a product or service. The substantive review of a sound mark application includes the examination of (1) whether it contains terms or sounds  that are not registerable (e.g. any national anthem), (2) its distinctive features, and (3) whether it is identical or similar enough to another sound or visual mark that it will likely confuse and mislead the public regarding the source of goods or services, or cause the public to believe those marks are associated in some way.

Among the above three criteria, distinctiveness may be the most difficult for applicants to prove and likely a key reason for the low registration rate of sound marks. According to the Standards, sounds having direct representation of the content, targeted consumer, quality or function of a product or a service lack distinctive features. For example, barking or meowing sounds used in pet related products or services are not distinctive. The Standards do not explain what will be considered distinctive. It instead states that a sound mark will acquire distinctive features over long term use, and the Trademark Office may therefore ask the applicant to submit evidence of use and explain how the mark acquires distinctiveness through use.

Cases in the past shed some light on how to prove salient features of a sound mark. Soon after the then-new Trademark Law Amendment came into effect, China’s tech giant Tencent applied for a sound mark for the new message notification sound on its instant messaging software QQ. The sound consists of six beeps (嘀嘀嘀嘀嘀嘀). The Trademark Office rejected the application for lack of distinctive features and then rejected Tencent’s subsequent request for review. Tencent then filed a lawsuit in Beijing IP court requesting withdrawal of the decision by the Trademark Office.

The Beijing IP Court adjudicated in favor of Tencent, holding that:

  1. Tencent had used the sound at issue continuously and extensively for a long time. Tencent launched QQ in 1999 (then “OICQ”) and had been using the same sound for new messages since then. QQ has hundreds of millions active users. The sound has been featured in TV shows and other media in association with QQ.
  2. The sound is an artificial sound and not a result of the software’s running process. Therefore it is not a functional sound.
  3. Overall, the sound serves the function of identifying the source of service.

After an appeal by the Trademark Office to higher court, the court confirmed the Beijing IP court’s decision. Tencent eventually registered the sound mark more than four years after the initial application.

In this case, Tencent provided documentation such as market and industry research reports, TV show clips, and literature found in the national library to prove that Tencent had used the sound extensively in association with the software and that it is tied to the service Tencent/QQ provides.

Another recent case on sound marks involves China’s “lipstick king”, Li Jiaqi, a live streamer who rose to fame by selling thousands of lipsticks in a matter of minutes. Li’s company applied to register “oh my god, buy it buy it” as a sound mark. This is a signature phrase Li often shouts out in his streaming sessions. The Trademark Office rejected the application in December 2020, and the applicant has since appealed. Because of Li’s popularity, this case attracted public attention and increased the awareness of brand protection by trademarking a sound.

Sound marks are relatively new in China, and China continues to explore how to effectively protect brands through sound trademarks. As the China Trademark Office can request additional proof of a mark’s salient features, companies should at least pay attention to their use of any signature sound and document the same to increase the likelihood of a successful sound mark registration.