(By Albert Chen) In yesterday’s post, we analyzed why Tencent would confront with the trademark squatting, and mainly blamed it for the defect on the internal management. Today, we would continue our discussion, and share our opinions on how could Tencent take back or stop the first application by others.
Before the end of this year, no one would oppose “iPad battle” shall be the trademark dispute of the year, and yet with the breaking out of conflict on the trademark of “微信”, a LBS software from Tencent Inc. (the “Tencent”) and its English name is WeChat, that affirmation would be challenged.
By the news report, “微信” (WeChat), the name of one of the most popular mobile apps nowadays has been squatted by Beijing Lian Zhi Zhao Yang Culture Communication Co., Ltd (the “Lianzhi”), and its application date is only one week earlier than that made by Tencent Inc. The classes involved in Lianzhi’s application include Class 38, the one for telecommunication and communication.
Then, could Tencent stop other’s squatting of its trademark “微信”, or to be trapped in a years-long battling?
I. The ways to stop others’ registration
As indicated in Baidu Library (note: the link is in Chinese), “微信” was first launched on 21st January of 2011. But on the other hand, Lianzhi made its trademark application before the official releasing of “微信”, which was on 17th January 2011.
Considering all these, by the views of the author, Tencent may face great uncertainty on its ambition to take its trademark back. But under the current legislature, there remain chances for Tencent to take back the trademark or stop others’ first application through the following ways:
1. To demand the establishment and protection on the well-known trademark;
2. To demand the malicious squatting on the unregistered trademark but with certain influence through use;
3. To demand the determination of the generic vocabulary of “微信”, and then to file its own trademark application with the claim that the mark has been distinctive through use by it.
But how would these ways effect and what are the respective difficulties in enforcing them?
II. Protection on well-known trademark and trademark with certain reputation
Regarding the protection on well-known trademark and trademark with certain reputation, it could conclude from the existing laws the following two conditions shall be applied:
1. The trademark has been established “well-known” or determined with certain reputation;
2. The first appearance of the protective trademark, and the latter copy by others.
But by the view of the author, Tencent has to face great difficulty in the demonstration of the above 2 aspects.
First, for the influence of the trademark, as claimed by Tencent, the user of “微信” has totaled 200 million, and thereby it seems to demonstrate the influence of the app is not difficult. But the “popularity” or the “reputation” demanded in law is focusing on the influence of the mark when applying, rather than that established when finding infringement.
According to the author’s retrieval, Tencent approved the project of “微信” (WeChat) on 18th November 2010, namely 3 month earlier than the trademark registration of “微信” by Lianzhi. Even the OBT (open beta test) of the app could be conducted immediately after its project setting up, since the first running of Gexin, Miliao and other similar LBS software, it is impossible for “微信” to accumulate the adequate influence to combat the first registration by third parties. And for this reason, to fight against the squatting from this espect, in my views, is not optimistic.
In addition, the later releasing of “微信” software would also impair the determination of trademark copy. No matter in the Article 13 of Trademark Law or as provided in the Article 2 of Interpretations on Several Issues of Law Application in Civil Case Hearing by Supreme People’s Court (the “Interpretations”), the condition legally for the infringement determination is “copy, imitate and translate”. That is to say, by the logic of the legislature and the Interpretations, the trademark protected shall appear first, and then followed the “copy, imitate and translate”.
But as discussed above, Lianzhi’s application is prior to the releasing of “微信” product, and that makes the “copy, imitate and translate” of the trademark impossible. And on the other hand, the purpose of trademark squatting is to make use of or free ride on the reputation accumulated through other’s trademark use. Once no such reputation could be used, then no reasons for any third parties to squat the trademark, for it would bring no extra interests to him, and wherein his registration could only be deemed a normal application for trademark admittance.
However, as believed by the author, there still rooms for Tencent to do in demonstrating the trademark copy with regard to the conduct sequence. By the industry practice, the OBT of “微信” shall be earlier than the trademark application by Lianzhi, once Tencent could prove the consistence of “微信” brand adoption, the sequence demonstration would not be difficult. But even so, Tencent shall still face how to prove the reputation of “微信”.
III. The generic vocabulary
The same popular app “Weibo” has come across the problem of “generic vocabulary” when applying for a registered trademark. The applicant Sina Inc. instantly made the trademark application shortly after the launch of Weibo, but refused by the trademark office in most classes involved. By then, as advocated by some professionals, considering the web portals all have its weibo product, and with the popularity of weibo, the name of it has been the pronoun of the a specific Internet product, and thereby becomes the generic vocabulary. On that account, by claiming “微信” to be the generic word to stop the trademark registration of “微信” could also be the option of Tencent.
But that method could damage the trademark application by Tencent at the same time. Once the vocabulary is decided within the scope of generic ones, objectively it could not be registered the trademark. And at that moment, the only way for Tencent to register the vocabulary as the trademark is to claim it has become distinctive through a long term use. But in practice, this method is with great difficulty. To solely consider the time demanded for the distinctiveness, the past two years are adequate for time amount demanded, and the current reputation of “微信” could be equal to the distinctiveness? All these remain the room for argument.
In fact, whether “微信” could be seen a generic vocabulary is not certain by now. To judge similar apps, no name including “微信”, like “小米微信”, “互动微信” has been used to described them, except Tencent’s “微信”. For this reason, to claim the name of “微信” has become generic would more be a theoretical discussion, and the author is not optimistic about it.
Basing on the above discussion, the author does not look favorably to Tencent’s taking back or stop of Lianzhi’s application of “微信”. But as a big company, Tencent could have made no registration of its popular product in the most related class, and that is truly outrageous to us. But as a loyal user of the app, the author prefers to see Tencent solve its trademark dispute as soon as possible, and would like to see it trapped in the battle with the opponent, and pays much for its negligence.