Sound Trade Marks in China

The judgement for a sound mark application of a can opening filed by Ardagh Metal Beverage Holdings GmbH & Co. KG (T‑668/19) clarifies the criteria for assessing the registration of sound marks in the EU. The distinctive character of a sound mark is perceived as an essential consideration which might lead to successful registration. In this case, the General Court decides that the sound produced by opening a drink cannot distinguish itself from comparable sounds. It means that such usual sounds which contain the sound element and the silent element fail to serve as an indicator of the origin of goods and/or service for the relevant consumer, thereby being refused as a registered trade mark on the basis of absolute grounds. In this regard, the refusal grounds might be taken as one concept of the distinctive character.

According to the published decisions in relation to sound marks applications, being lack of distinctive character also has been recognized as the common refusal reason in China. PRC Trade Mark Law has extended its protection to sound signs since 2013. Despite of the criteria applicable to form marks, being devoid of distinctive character for sound marks also refers to those indicating (1) extraordinary simple tune or melody, (2) a whole or long song, (3) advertising phrases expressed in normal/ordinary voice and (4) customary music or sounds in the established practices of the trade. One representative case, sound mark (appl. No. 14502527) has been registered as atypical sounds after 5-year significant attempts. The court upheld that the evidence the applicant provided is convincible since it has acquired a distinctive character as a result of rather long period use before the date of application for registration.           

As shown on CNIPA database, the amount of registered sound marks is less than 50, compared to that of alive form marks, around 30 millions of pieces. The obstruction of sound mark registration is that if the nature of the sign itself or its character obtained by practice use can be capable of distinguishing goods or services of one undertaking from those of other undertakings. As above mentioned, the authority provides a complete listing of all the possibilities which are excluded from trade mark registration. If a sound sign satisfies this requirement, then the owner should further submit solid use evidence to support its distinctive character through use in practice. Obviously, the latter assessment of the distinctive character of sound marks has been increasingly adopted by the authority when making such decisions. This opinion is in accordance with the Trade Mark Examination and Trial Guide, which regulates that sound marks are recognized as distinctive in terms of popularity, reputation and geographical coverage by practice use.

Considering the difficulty of registering sound marks, another method of claiming sound right is to seek legal protection under moral right. The PRC Supreme Court issued a statement regarding the amendment to civil law cases on 29 December 2020, which introduces that human voice is categorized as moral right. Although the differences between sound moral right and sound marks, the impressive point is that the nature of voice produced by human being is exclusive and distinctive and therefore it could serve the basic function of trade mark in respect of the origin of the goods and/or services. If your voice is refused to be registered as trade mark, this way is deserved to take a shot.              

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