Trademarking a Sound: The First Sound Trademark granted through a Judicial Proceeding in China

Dechert LLP

Dechert LLP

The Beijing High Court recently made a final judgement in favor of Tencent, finding that the notification beeping sound of the digital company’s instant-messaging and social network services is distinctive enough to be awarded a trademark registration. This marks the first sound trademark registration granted through a judicial proceeding in China. Significantly, the Beijing High Court’s judgement provides a good guidance with regard to the standard for establishing the acquired distinctiveness of a sound trademark. However, the standard of test for non-functionality has not been well-defined in the present judgement, which remains to be further clarified by future judicial interpretation of the Chinese courts.


Sound trademarks entered into the “registrable trademarks” arena and made the official debut with the amendment of the Trademark Law of China in 2013. In order to be registrable as a trademark, a sound -- either a musical or a non-musical sound, or a combination of both -- should not fall under one of the prohibited categories,2 should be capable of distinguishing the goods or services of a party from those of others and should be non-functional.

The distinctiveness of a sound trademark could only be established upon proof of long-term and wide-scope commercial use of the trademark in China. With regard to functionality, under China Trademark Law (2013 Amendment), the only provision dealing with the evaluation of functionality is Article 12, which provides that where the registration of a three-dimensional trademark is applied for, it shall not be registered if it is only a shape resulting from the nature of the goods, a shape of the goods necessary for achieving a technical effect, or a shape to add a substantive value to the goods. The trademark law however remains silent upon whether there is a similar test with respect to other non-conventional trademarks, such as sound trademarks. The legal consensus is that this constitutes a loophole in the trademark law and that functional sound trademarks would be subject to the same exclusions or limitations as functional three-dimensional trademarks. Applying the test for three-dimensional trademarks in the realm of sound trademarks, it is reasonable to deduce that a sound shall not be registered if it is only a sound resulting from the nature of the goods, a sound of the goods necessary for achieving a technical effect, or a sound to add a substantive value to the goods.

As suggested by the low pass rate of sound trademark applications before the China Trademark Office ("CTMO"), the bar for establishing the registrability of sound trademarks has been set fairly high. After the amended Trademark Law came into force on May 1, 2014, the CTMO began to receive and examine about 546 applications for sound trademarks, while registrations were only granted to 15 among them.3

The Tencent Case

On May 4, 2014, Tencent filed for trademark application of its beeping sound which consists of a tone, “Di Di Di Di Di Di,” the notification ring for an incoming message of its popular instant-messaging and social network software named QQ. The application was filed in Class 38 designating various service items including TV broadcasting, news agencies, message transmission, conference call services, online chatting forums, computer-aided message and graphic transmission, internet chatting rooms, online e-card transmission, digital files transmission and email services.

The CTMO found that the sound depicted by the trademark in issue was not distinctive and rejected Tencent’s trademark application. In a review of the decision made on April 18, 2016, the Trademark Review and Adjudication Board (“TRAB”) upheld the CTMO’s rejection on the basis that the sound in issue was too simple, functional and indistinctive.

Tencent subsequently appealed to the Beijing IP Court (“IP Court”) against TRAB, seeking to overturn TRAB’s decision. In a judgement4 made on April 27, 2018, the IP Court held that, “in judging whether a sound trademark is distinctive, consideration should be given to the existence of a special rhythm, melody or sound effect that could acoustically identify the product and its origin…The beeping sound in issue has its special traits of a sound with high-pitched, continuous and speedy elements accompanied by unique rhythm and sound effects, which makes it uncommon in daily life, therefore, it is not a ‘simple sound’ as found by TRAB.” Furthermore, the IP Court found that, “though the beeping sound signifies the incoming of a new message, such sound was the result of an artificial setting, rather than an inevitable technical effect caused by the operation of the QQ software, thus it is non-functional.” In addition, the IP Court affirmed that, “the evidence provided by Tencent could prove that the sound in issue has been in commercial use since February 1999 in China for the popular QQ software, a unique app with all the popular chatting and social functions. The QQ software has a remarkable market share with high reputation, hence a unique connection has been established between the beeping sound and the QQ software as well as with Tencent.” Accordingly, the IP Court held that the sound trademark in issue has acquired distinctiveness for the trademark purpose and should be registered.

After losing the battle before the IP Court, TRAB appealed to the Beijing High Court (“High Court”) but the High Court ruled to support most of the major findings of the IP Court except that it truncated three service items including “TV broadcasting, news agencies and conference call services” from the list of services that Tencent applied for, on the ground that the truncated items had not been used by Tencent to develop a distinctive feature. The final judgment5 in favor of Tencent made by the High Court was issued on September 27, 2018, which, as mentioned above, makes Tencent’s beeping sound the first sound trademark registration granted through a judicial proceeding in China.


Both the IP Court and the High Court devoted a fair amount of time in their judgments to analyze that distinctiveness has been acquired through Tencent’s commercial use of its sound trademark in China for a long period of time. The courts’ standard has been clear: for a sound trademark to be registrable, the applicant must show continuous use of the mark in commerce, and the capability of the mark to associate the product with its origin. Furthermore, the IP Court suggested in its judgment that non-functionality should be a requirement for registration of a sound trademark,6 however, neither the IP Court nor the High Court adequately explained why Tencent’s sound trademark in issue managed to pass the non-functionality test with its apparent functional attributes.

In its present judgment, the IP Court held that the sound in issue was non-functional because it was the result of an artificial setting, not an inevitable technical effect caused by the operation of the QQ software. This perhaps is not a very convincing explanation because in the cyber world virtually every sound is the result of an artificial setting, since the operation of any software is inherently silent and would not invoke any sound unless being artificially set up to have a sound. Just because the beeping sound was artificially set up by Tencent does not necessarily mean that its competitors have no competitive need to set up the same beeping sound for a similar type of software to achieve the same technical effect. As this “artificial setting” test fails on its face, the question then becomes how functional that beeping sound of Tencent is when produced by the software QQ. If the sound is purely functional because it is merely the sound produced by any social communication software of that type to indicate the incoming of messages, registration should have been rejected, no matter how well-known or distinctive it has become.

As a notification beeping sound, the “Di Di Di Di Di Di” ring of Tencent appears to be functional for a social communication software because it performs the job (perhaps more effectively than other types of rings) to notify the user that a new message is coming and awaiting to be answered. The ring has been so commonly used by similar software that most mobile phone users in China could open the sound setting software in their mobile phones to locate and install a similar notification ring for incoming text messages, which indicates that the sound of beeping could be resulted from the nature of social communication software and could be essential to the use or purpose of such type of software. It follows that the granting of registration to Tencent for such a ring is likely to hinder competition in the relevant market as competitors would be prohibited from using identical or similar rings.

Indeed there are adequate alternatives to the notification feature of Tencent’s beeping sound that would allow its competitors to make their software function just as effectively, for example, by replacing the “Di Di Di Di Di Di” ring with another one in the sound setting menu. However, even though there are abundant alternatives available in the marketplace, a particular product feature may still be functional and not eligible for trademark protection.7 In another word, existence of comparable alternative rings does not in itself transform a functional sound into a non-functional sound. The key test, which has never been clarified by the courts, is likely that whether such ring is essential to the use or purpose of similar types of software.

The principle that trademarks should not be functional is of significant importance to the public due to the concern of awarding an everlasting monopoly to the functional attributes of a trademark. However, this issue has not been adequately addressed by the courts in the present case.


In today’s dynamic business world in China, sound branding and audio marketing are playing an increasingly important role in identifying businesses. To make their brands stand out and recognizable, tremendous effort and time are being expended by brand owners so that products and services are not only visible but also audible by consumers. Significantly, the present case will provide a good guidance with regard to the types of evidence to be produced to the trademark examination authorities to establish the acquired distinctiveness of a sound trademark. However, the standard of test for non-functionality has not been well-defined either in the present judgements or in the trademark law, which remains to be further clarified by future judicial interpretation of the Chinese courts. 


1) The author gratefully acknowledges partner Glenn Gundersen of Dechert's Philadelphia office, who made valuable suggestions to this article.

2) As set forth in the Trademark Examination and Review Guidelines (2017), prohibitive sounds include: i) melodies that consist of Chinese or foreign national anthem or those with similar rhythm, ii) religious music or iii) sounds with violent or horrifying characteristics.


4) Beijing IP Court: (2016) Jing 73 Xing Chu No. 3203.

5) Beijing High Court: (2018) Jing Xing Zhong No. 3673.

6) After the Beijing IP Court made the present Tencent judgement, it is clear that applying for a sound that is well-known and distinctive will not in itself guarantee registration, as the sound should also pass the non-functionality test.

7) See Beijing High Court’s judgement under (2010) Gao Xing Zhong Zi No. 131. Here is a brief description of the case: Emerson Electric Co. filed for a clover design 3D trademark for the goods of sealing side buttons (machinery parts). The CTMO found that the shape depicted by the trademark was necessary to achieve a technical effect for the goods designated, namely, sealing side buttons (machinery parts). As a result, the CTMO rejected Emerson’s trademark application. Despite the fact that Emerson was able to provide many alternative designs produced by itself or its competitors during the first instance proceeding, the rejection was later upheld by the Beijing High Court.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Dechert LLP | Attorney Advertising

Written by:

Dechert LLP

Dechert LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
- hide

JD Supra Privacy Policy

Updated: May 25, 2018:

JD Supra is a legal publishing service that connects experts and their content with broader audiences of professionals, journalists and associations.

This Privacy Policy describes how JD Supra, LLC ("JD Supra" or "we," "us," or "our") collects, uses and shares personal data collected from visitors to our website (located at (our "Website") who view only publicly-available content as well as subscribers to our services (such as our email digests or author tools)(our "Services"). By using our Website and registering for one of our Services, you are agreeing to the terms of this Privacy Policy.

Please note that if you subscribe to one of our Services, you can make choices about how we collect, use and share your information through our Privacy Center under the "My Account" dashboard (available if you are logged into your JD Supra account).

Collection of Information

Registration Information. When you register with JD Supra for our Website and Services, either as an author or as a subscriber, you will be asked to provide identifying information to create your JD Supra account ("Registration Data"), such as your:

  • Email
  • First Name
  • Last Name
  • Company Name
  • Company Industry
  • Title
  • Country

Other Information: We also collect other information you may voluntarily provide. This may include content you provide for publication. We may also receive your communications with others through our Website and Services (such as contacting an author through our Website) or communications directly with us (such as through email, feedback or other forms or social media). If you are a subscribed user, we will also collect your user preferences, such as the types of articles you would like to read.

Information from third parties (such as, from your employer or LinkedIn): We may also receive information about you from third party sources. For example, your employer may provide your information to us, such as in connection with an article submitted by your employer for publication. If you choose to use LinkedIn to subscribe to our Website and Services, we also collect information related to your LinkedIn account and profile.

Your interactions with our Website and Services: As is true of most websites, we gather certain information automatically. This information includes IP addresses, browser type, Internet service provider (ISP), referring/exit pages, operating system, date/time stamp and clickstream data. We use this information to analyze trends, to administer the Website and our Services, to improve the content and performance of our Website and Services, and to track users' movements around the site. We may also link this automatically-collected data to personal information, for example, to inform authors about who has read their articles. Some of this data is collected through information sent by your web browser. We also use cookies and other tracking technologies to collect this information. To learn more about cookies and other tracking technologies that JD Supra may use on our Website and Services please see our "Cookies Guide" page.

How do we use this information?

We use the information and data we collect principally in order to provide our Website and Services. More specifically, we may use your personal information to:

  • Operate our Website and Services and publish content;
  • Distribute content to you in accordance with your preferences as well as to provide other notifications to you (for example, updates about our policies and terms);
  • Measure readership and usage of the Website and Services;
  • Communicate with you regarding your questions and requests;
  • Authenticate users and to provide for the safety and security of our Website and Services;
  • Conduct research and similar activities to improve our Website and Services; and
  • Comply with our legal and regulatory responsibilities and to enforce our rights.

How is your information shared?

  • Content and other public information (such as an author profile) is shared on our Website and Services, including via email digests and social media feeds, and is accessible to the general public.
  • If you choose to use our Website and Services to communicate directly with a company or individual, such communication may be shared accordingly.
  • Readership information is provided to publishing law firms and authors of content to give them insight into their readership and to help them to improve their content.
  • Our Website may offer you the opportunity to share information through our Website, such as through Facebook's "Like" or Twitter's "Tweet" button. We offer this functionality to help generate interest in our Website and content and to permit you to recommend content to your contacts. You should be aware that sharing through such functionality may result in information being collected by the applicable social media network and possibly being made publicly available (for example, through a search engine). Any such information collection would be subject to such third party social media network's privacy policy.
  • Your information may also be shared to parties who support our business, such as professional advisors as well as web-hosting providers, analytics providers and other information technology providers.
  • Any court, governmental authority, law enforcement agency or other third party where we believe disclosure is necessary to comply with a legal or regulatory obligation, or otherwise to protect our rights, the rights of any third party or individuals' personal safety, or to detect, prevent, or otherwise address fraud, security or safety issues.
  • To our affiliated entities and in connection with the sale, assignment or other transfer of our company or our business.

How We Protect Your Information

JD Supra takes reasonable and appropriate precautions to insure that user information is protected from loss, misuse and unauthorized access, disclosure, alteration and destruction. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. You should keep in mind that no Internet transmission is ever 100% secure or error-free. Where you use log-in credentials (usernames, passwords) on our Website, please remember that it is your responsibility to safeguard them. If you believe that your log-in credentials have been compromised, please contact us at

Children's Information

Our Website and Services are not directed at children under the age of 16 and we do not knowingly collect personal information from children under the age of 16 through our Website and/or Services. If you have reason to believe that a child under the age of 16 has provided personal information to us, please contact us, and we will endeavor to delete that information from our databases.

Links to Other Websites

Our Website and Services may contain links to other websites. The operators of such other websites may collect information about you, including through cookies or other technologies. If you are using our Website or Services and click a link to another site, you will leave our Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We are not responsible for the data collection and use practices of such other sites. This Policy applies solely to the information collected in connection with your use of our Website and Services and does not apply to any practices conducted offline or in connection with any other websites.

Information for EU and Swiss Residents

JD Supra's principal place of business is in the United States. By subscribing to our website, you expressly consent to your information being processed in the United States.

  • Our Legal Basis for Processing: Generally, we rely on our legitimate interests in order to process your personal information. For example, we rely on this legal ground if we use your personal information to manage your Registration Data and administer our relationship with you; to deliver our Website and Services; understand and improve our Website and Services; report reader analytics to our authors; to personalize your experience on our Website and Services; and where necessary to protect or defend our or another's rights or property, or to detect, prevent, or otherwise address fraud, security, safety or privacy issues. Please see Article 6(1)(f) of the E.U. General Data Protection Regulation ("GDPR") In addition, there may be other situations where other grounds for processing may exist, such as where processing is a result of legal requirements (GDPR Article 6(1)(c)) or for reasons of public interest (GDPR Article 6(1)(e)). Please see the "Your Rights" section of this Privacy Policy immediately below for more information about how you may request that we limit or refrain from processing your personal information.
  • Your Rights
    • Right of Access/Portability: You can ask to review details about the information we hold about you and how that information has been used and disclosed. Note that we may request to verify your identification before fulfilling your request. You can also request that your personal information is provided to you in a commonly used electronic format so that you can share it with other organizations.
    • Right to Correct Information: You may ask that we make corrections to any information we hold, if you believe such correction to be necessary.
    • Right to Restrict Our Processing or Erasure of Information: You also have the right in certain circumstances to ask us to restrict processing of your personal information or to erase your personal information. Where you have consented to our use of your personal information, you can withdraw your consent at any time.

You can make a request to exercise any of these rights by emailing us at or by writing to us at:

Privacy Officer
JD Supra, LLC
10 Liberty Ship Way, Suite 300
Sausalito, California 94965

You can also manage your profile and subscriptions through our Privacy Center under the "My Account" dashboard.

We will make all practical efforts to respect your wishes. There may be times, however, where we are not able to fulfill your request, for example, if applicable law prohibits our compliance. Please note that JD Supra does not use "automatic decision making" or "profiling" as those terms are defined in the GDPR.

  • Timeframe for retaining your personal information: We will retain your personal information in a form that identifies you only for as long as it serves the purpose(s) for which it was initially collected as stated in this Privacy Policy, or subsequently authorized. We may continue processing your personal information for longer periods, but only for the time and to the extent such processing reasonably serves the purposes of archiving in the public interest, journalism, literature and art, scientific or historical research and statistical analysis, and subject to the protection of this Privacy Policy. For example, if you are an author, your personal information may continue to be published in connection with your article indefinitely. When we have no ongoing legitimate business need to process your personal information, we will either delete or anonymize it, or, if this is not possible (for example, because your personal information has been stored in backup archives), then we will securely store your personal information and isolate it from any further processing until deletion is possible.
  • Onward Transfer to Third Parties: As noted in the "How We Share Your Data" Section above, JD Supra may share your information with third parties. When JD Supra discloses your personal information to third parties, we have ensured that such third parties have either certified under the EU-U.S. or Swiss Privacy Shield Framework and will process all personal data received from EU member states/Switzerland in reliance on the applicable Privacy Shield Framework or that they have been subjected to strict contractual provisions in their contract with us to guarantee an adequate level of data protection for your data.

California Privacy Rights

Pursuant to Section 1798.83 of the California Civil Code, our customers who are California residents have the right to request certain information regarding our disclosure of personal information to third parties for their direct marketing purposes.

You can make a request for this information by emailing us at or by writing to us at:

Privacy Officer
JD Supra, LLC
10 Liberty Ship Way, Suite 300
Sausalito, California 94965

Some browsers have incorporated a Do Not Track (DNT) feature. These features, when turned on, send a signal that you prefer that the website you are visiting not collect and use data regarding your online searching and browsing activities. As there is not yet a common understanding on how to interpret the DNT signal, we currently do not respond to DNT signals on our site.

Access/Correct/Update/Delete Personal Information

For non-EU/Swiss residents, if you would like to know what personal information we have about you, you can send an e-mail to We will be in contact with you (by mail or otherwise) to verify your identity and provide you the information you request. We will respond within 30 days to your request for access to your personal information. In some cases, we may not be able to remove your personal information, in which case we will let you know if we are unable to do so and why. If you would like to correct or update your personal information, you can manage your profile and subscriptions through our Privacy Center under the "My Account" dashboard. If you would like to delete your account or remove your information from our Website and Services, send an e-mail to

Changes in Our Privacy Policy

We reserve the right to change this Privacy Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our Privacy Policy will become effective upon posting of the revised policy on the Website. By continuing to use our Website and Services following such changes, you will be deemed to have agreed to such changes.

Contacting JD Supra

If you have any questions about this Privacy Policy, the practices of this site, your dealings with our Website or Services, or if you would like to change any of the information you have provided to us, please contact us at:

JD Supra Cookie Guide

As with many websites, JD Supra's website (located at (our "Website") and our services (such as our email article digests)(our "Services") use a standard technology called a "cookie" and other similar technologies (such as, pixels and web beacons), which are small data files that are transferred to your computer when you use our Website and Services. These technologies automatically identify your browser whenever you interact with our Website and Services.

How We Use Cookies and Other Tracking Technologies

We use cookies and other tracking technologies to:

  1. Improve the user experience on our Website and Services;
  2. Store the authorization token that users receive when they login to the private areas of our Website. This token is specific to a user's login session and requires a valid username and password to obtain. It is required to access the user's profile information, subscriptions, and analytics;
  3. Track anonymous site usage; and
  4. Permit connectivity with social media networks to permit content sharing.

There are different types of cookies and other technologies used our Website, notably:

  • "Session cookies" - These cookies only last as long as your online session, and disappear from your computer or device when you close your browser (like Internet Explorer, Google Chrome or Safari).
  • "Persistent cookies" - These cookies stay on your computer or device after your browser has been closed and last for a time specified in the cookie. We use persistent cookies when we need to know who you are for more than one browsing session. For example, we use them to remember your preferences for the next time you visit.
  • "Web Beacons/Pixels" - Some of our web pages and emails may also contain small electronic images known as web beacons, clear GIFs or single-pixel GIFs. These images are placed on a web page or email and typically work in conjunction with cookies to collect data. We use these images to identify our users and user behavior, such as counting the number of users who have visited a web page or acted upon one of our email digests.

JD Supra Cookies. We place our own cookies on your computer to track certain information about you while you are using our Website and Services. For example, we place a session cookie on your computer each time you visit our Website. We use these cookies to allow you to log-in to your subscriber account. In addition, through these cookies we are able to collect information about how you use the Website, including what browser you may be using, your IP address, and the URL address you came from upon visiting our Website and the URL you next visit (even if those URLs are not on our Website). We also utilize email web beacons to monitor whether our emails are being delivered and read. We also use these tools to help deliver reader analytics to our authors to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

Analytics/Performance Cookies. JD Supra also uses the following analytic tools to help us analyze the performance of our Website and Services as well as how visitors use our Website and Services:

  • HubSpot - For more information about HubSpot cookies, please visit
  • New Relic - For more information on New Relic cookies, please visit
  • Google Analytics - For more information on Google Analytics cookies, visit To opt-out of being tracked by Google Analytics across all websites visit This will allow you to download and install a Google Analytics cookie-free web browser.

Facebook, Twitter and other Social Network Cookies. Our content pages allow you to share content appearing on our Website and Services to your social media accounts through the "Like," "Tweet," or similar buttons displayed on such pages. To accomplish this Service, we embed code that such third party social networks provide and that we do not control. These buttons know that you are logged in to your social network account and therefore such social networks could also know that you are viewing the JD Supra Website.

Controlling and Deleting Cookies

If you would like to change how a browser uses cookies, including blocking or deleting cookies from the JD Supra Website and Services you can do so by changing the settings in your web browser. To control cookies, most browsers allow you to either accept or reject all cookies, only accept certain types of cookies, or prompt you every time a site wishes to save a cookie. It's also easy to delete cookies that are already saved on your device by a browser.

The processes for controlling and deleting cookies vary depending on which browser you use. To find out how to do so with a particular browser, you can use your browser's "Help" function or alternatively, you can visit which explains, step-by-step, how to control and delete cookies in most browsers.

Updates to This Policy

We may update this cookie policy and our Privacy Policy from time-to-time, particularly as technology changes. You can always check this page for the latest version. We may also notify you of changes to our privacy policy by email.

Contacting JD Supra

If you have any questions about how we use cookies and other tracking technologies, please contact us at:

- hide

This website uses cookies to improve user experience, track anonymous site usage, store authorization tokens and permit sharing on social media networks. By continuing to browse this website you accept the use of cookies. Click here to read more about how we use cookies.