The Announcement of the Trademark “weibo” Was Immediately Opposed
The Trademark Office held that the opposition did not stand; The Trademark Review and Adjudication Board held that weibo corresponded to “微博”, which was a customary name that did not possess the function to distinguish the source of service, and therefore the opposition stood; the first-instance court held that “weibo” and “微博” had corresponding relationship and, although 微博 was not a customary name, it directly expressed the characteristic of the service and did not possess the function to distinguish the source of service; the second-instance court held that the involved trademark directly expressed the characteristics of the service, would inevitably make relevant public form conception on the these characteristics, and did not possess the function to distinguish the source of service.
Case Numbers:
Trademark Office [2013] Shang Biao Yi Zi No. 7876
Trademark Review and Adjudication Board [2015] No. 52284
First-Instance Trial: [2015] Jing Zhi Xing Chu Zi No.5140
Second-Instance Trail: [2016] Jing Xing Zhong No. 1971
Related Case Numbers:
Same Involved Parties; Similar Events in the Case; Same Collegial Panel
[2016] Jing Xing Zhong, No. 1975
Second-Instance Collegial Panel:
Sha Rina, Zhou Bo, Fan Xue
Main Points of the Ruling
The Chinese characters, “微博” have their phonetic transcription (pinyin) as “weibo”. Based on the interpretation and reading habits of the Chinese public, and on the audience coverage of weibo (微博), overall, the relevant public can easily pair “weibo” with “微博” in conception and treat it as a product name.
The services associated with the opposed trademark has close connection with weibo product. The opposed trademark’s application for registration, on the mentioned services, directly expresses the characteristics of the services. This will inevitably cause the relevant public to form conception on these characteristics. The trademark does not have the function to distinguish the source of the service.
The second-trial judgment is appended:
Beijing Higher People’s Court
Administrative Judgment
[2016] Jing Xing Zhong No. 1971
Appellant (Plaintiff of the Original Trial): Beijing Weimeng Chuangke Internet Technology Co., Ltd, address is Beijing Haidian District Haidian North No. 2 Street, 10, Floor 7
Legal Representative: Liu Yunli, General Manager
Entrusted Agent: Xiao Yuexin, lawyer from Beijing Jinshe Law Firm
Entrusted Agent: Jiang Limei, lawyer from Beijing Jinshe Law Firm
Respondent (Defendant of the Original Trial): The Trademark Review and Adjudication Board of the State Administration of Industry & Commerce, address is Beijing Xicheng District Chama South Street, 1
Legal Representative: Zhao Gang, Director
Entrusted Agent: Li Jing
Respondent (Third Party of the Original Trail): Shenzhen Trademark Association, address is Guangdong Shenzhen Futian District South of Shennan Boulevard Anhui Building 1320
Legal Representative: Huang Weijia, Executive President
Entrusted Agent: Zhang Hong, lawyer from Beijing Janlea Law Firm
Entrusted Agent: Xu Jin, lawyer from Beijing Janlea Law Firm
The appellant, Beijing Weimeng Chuangke Internet Technology Co., Ltd (hereinafter referred to Weimeng Chuangke) was dissatisfied with Beijing Intellectual Property Court’s (2015) Jing Zhi Xing Chu Zi No. 5140 administrative ruling, which was made on the trademark opposition review administrative litigation. The company thus filed an appeal to our court. Our court accepted the case on March 17th 2016 and formed a collegial panel to trial the case, in accordance with the law. The case now is concluded.
Beijing Intellectual Property Court confirmed the following facts:
No. 9013728 “weibo and Picture” trademark (hereinafter referred to the opposed trademark) was filed an application upon by Weimeng Chuangke on December 31th 2010. It was designated to be used on type 38 radio broadcasting, television airing, news press, computer terminal communication, computer information and images transmission, electronic notice board service (communication service), etc.
Shenzhen Trademark Association filed an opposition within the lawful opposition period. On March 19th 2013, the Trademark Office of the State Administration of Industry & Commerce of China (hereinafter referred to the Trademark Office) made [2013] Shang Biao Yi Zi No. 7876 “‘weibo’ and Picture” Trademark Opposition Adjudication” (hereinafter referred to Adjudication No. 7876). The adjudication approved the registration of the opposed trademark, based on article 33 of the Trademark Law of the People’s Republic of China 2001 amendment (hereinafter referred to 2001 Trademark Law)
Shenzhen Trademark Association was dissatisfied with Adjudication No. 7876, and applied for a review to the Trademark Review and Adjudication Board of the State Administration of Industry and Commerce (hereinafter referred to the Trademark Review and Adjudication Board) on April 16th 2013. The main reasons for the review were:
1. The opposed trademark formed a corresponding relationship with 微博. Due to its extensive use, “微博” had become a customary name in Internet information communication, the active use of this name by Weimeng Chuangke made the public perceive the opposed trademark as a customary name. The use of the opposed trademark directly expressed the capacity, functions, technology and other characteristics of “微博”. Also, the pictorial part of the opposed trademark was exactly the symbol of Wi-Fi signal in Internet communication technology, which reinforced its use as a customary name. Therefore, the opposed trademark did not have the distinctiveness as a trademark.
2. “微博/weibo” is a customary name. If it would only be approved for Weimeng Chuangke to enjoy its exclusive use, the current 微博 product, in its fast development, would be harmed and negative impact would be incurred.
To sum up, according to article 10 paragraph 1 item 8 and article 11 paragraph 1 item 1, 2 and 3 of the of the 2001 Trademark Law, the application for the opposed trademark should not be approved.
During the procedure of the trademark opposition review, Shenzhen Trademark Association submitted to the Trademark Review and Adjudication Board evidence including the registration information of the opposed trademark, the explication of “Blog” and “Micro Blog” on Baidu Baike, news reports and magazine articles about 微博, the snapshots of login pages of all 微博 websites, China Internet Network Development State Statistic Report (January 2013), iResearch’s China Commercialization of Weibo Report, and Regulations Relating to Beijing Weibo Blogger Development and its Q&A content.
Also during the procedure of the trademark opposition review, Weimeng Chuangke submitted to the Trademark Review and Adjudication Board evidence including the registration documents of trademarks including “微博”, “weibo”, and “BOKE”.
On July 30th 2015, the Trademark Review and Adjudication Board made the Shang Ping Zi (2015) No. 52284 “Trademark Opposition Review Adjudication on No. 9013728 ‘weibo and Picture’ Trademark” (hereinafter referred to the prosecuted adjudication). The adjudication ruled as follows: 微博 (Weibo), the abbreviation of Micro Blog, was a broadcasting social network platform that shared short and immediate messages through the following mechanism. The biggest characteristic of 微博 was the quickness of posting and spreading information. The instantaneity, immediacy, and convenience of 微博 gradually surpassed all media outlets, and became an important channel for commercial activities such as advertising, product displays, market surveys, and opinion polls.
As indicated by the evidence from Shenzhen Trademark Association, since 2009, domestic web portals including Sina, Sohu and Tencent have all been establishing weibos and all of them integrated their own business names with the characters “微博”, in order to distinguish the supplier of the publicity platform of specific website. Due to its features such as the instantaneous spread, weibo had become the customary means of online publicity. The relevant public who used or developed weibo, through using weibo, had already associated weibo with services, including radio broadcasting, television airing, news press, on which the opposed trademark was designated to use. Weibo had already become the customary name for services, including radio broadcasting, television airing, news press, on which the opposed trademark was designated to use. It was also a description of the characteristics of these services. Its use on the designated services of the opposed trademark, therefore, was not distinctive.
The opposed trademark consisted of the English letters “weibo” and a picture, which resembled the customary symbol of Wi-Fi. The combination of the English letters and the picture in the opposed trademark would also be considered by the relevant public as related to the specific combination of English letters that corresponded to the Chinese characters “微博”. The application for the registration of the opposed trademark constituted the situation described in article 11 paragraph 1 item 1, 2, and 3 of the Trademark Law of the People’s Republic of China 2013 Amendment.
The opposed trademark itself would not produce negative impacts such as that would be harmful to the socialist moral codes and did not violate article 10 paragraph 1 item 8 of the Trademark Law. To sum up, Shenzhen Trademark Association’s reasons for opposition review were tenable. According to article 11 paragraph 1 item 1, 2, and 3 and article 35 of the Trademark Law 2013 Amendment, and to article 33 paragraph 1 of the 2001 Trademark Law, the Board ruled that the opposed trademark would not be approved for registration.
Weimeng Chuangke was dissatisfied with the prosecuted adjudication, and thus filed litigation to the court and demanded the cancelation of the prosecuted adjudication.
During the litigation process, Weimeng Chuangke submitted 4 groups and 12 pieces of evidence, including the search results of weibo, the phonetic transcription (pinyin), which were downloaded from the National Library of China through the Wenjin search engine, and registration documents relating to weibo or weibo and Chinese characters combined trademarks. These were used to prove that the opposed trademark did not violate article 11 paragraph 1 item 1, 2, and 3 of the Trademark Law. Shenzhen Trademark Association submitted to the court 15 pieces of evidence, including related investigation reports and documents stating that other countries and regions would not approve the registration of “weibo” and “微博” trademarks. These were used to prove that the opposed trademark indeed violated article 11 paragraph 1 item 1, 2, and 3 of the Trademark Law.
Beijing Intellectual Property Court held as follows:
微博 (Weibo), the abbreviation of Micro Blog, was a broadcasting social network platform that shared short and immediate messages through the following mechanism. Its transmission of information was instantaneous and convenient, with a wide range of audiences. It had gradually become an important channel for commercial activities such as advertising, news posting, images displaying, and market surveys.
In this case, the opposed trademark consisted of weibo, the phonetic transcription (pinyin), and a picture resembling the customary symbol of Wi-Fi. It was designated to be used on services including radio broadcasting, television airing, news press, computer terminal communication, and computer information and images transmission, which had several overlaps with the functions of weibo. Although “weibo” (the pinyin) corresponded to several Chinese words, for example, “微波” and “韦伯” as described by Weimeng Chuangke, considering that the opposed trademark included a picture resembling the Wi-Fi symbol and that weibo had a wide range of audiences, when “weibo” was used with services such as “radio broadcasting, television airing, news press, and computer information and images transmission”, the public would usually assume “weibo” as “微博”. “Weibo” and “微博”, therefore, had corresponding relationship.
Since weibo itself possessed functions including news posting and information transmission, and the main distinguishing part of the opposed trademark was “weibo”, which corresponded to “微博”, if the opposed trademark was to be registered on services including radio broadcasting, television airing, news press, and computer information and images transmission, it would directly express the characteristics of the services and would not have the function of distinguishing the source of the services. Therefore, the opposed trademark violated article 11 paragraph 1 item 2 in the Trademark Law 2013 Amendment.
Despite that weibo’s functions had exceeded those of social media and had functions of such as advertising, news posting and marketing, it was still the customary name of this type of social media or communication platform. Except for the weibo platform, other means of radio broadcasting, television airing, and news broadcasting still existed, whereas weibo’s news posting service could not cover most of these means of broadcasting. Therefore the recorded evidence was not sufficient to prove that weibo was the customary name for services including radio broadcasting, television airing, news press, and computer information and images transmission.
To sum up, Beijing Intellectual Property Court, in accordance with article 69 in Administrative Litigation Law of the People’s Republic of China ruled that Weimeng Chuangke’s litigation demand would be rejected.
Weimeng Chuanek was dissatisfied with the first-instance ruling and appealed to our court. It demanded the cancelation of the first-instance ruling and the prosecuted adjudication. The main reason for appealing was: the opposed trademark, as a whole, was an exclusively used trademark symbol by Weimeng Chuangke, and, although web portals including Tencent, Sohu, and NetEase had used “weibo” the Chinese word as their product names, the original applicant of the opposed trademark, Sina Technology (China) Co., Ltd. (hereinafter referred to Sina), was the only market player currently who used “weibo” in its product name.
Whether or not the opposed trademark “weibo” corresponded to “微博”, it only indicated the characteristics of related services. In consideration of the current market and of the relevant public, the main meaning of weibo (the Chinese word”) was referring to Weimeng Chuangke as the supplier or source of the Micro Blog services. Although the “微博” product provided by Weimeng Chuangxin possessed functions including radio broadcasting, television airing, and news broadcasting, these would not hinder “微博” the Chinese from being a specific name of a service at Weimeng Chuangxin. Despite that the opposed trademark “weibo” and “微博” had corresponding relationship, the opposed trademark would still possess applicability.
The Trademark Review and Adjudication Board and Shenzhen Trademark Association recognized the original ruling.
After the trial, our court confirmed as follows:
The facts confirmed by the first-court instance were indeed true. Our court confirmed the recorded evidence, including the documentation the opposed trademark, the Adjudication No. 7876, trademark opposition review application letter, the prosecuted adjudication, and evidence submitted during the trademark opposition review period and during the litigation.
It was also confirmed that, excepted for the weibo service provided by Weimeng Chuangke, there were also Tencent weibo, CCTV weibo and other products.
These facts could be proved by the relevant evidence provided by the involved parties.
The court’s opinion is as follows:
According to article 6 paragraph 1 of The Interpretation of the Supreme People's Court on Issues concerning the Jurisdiction over Trademark Cases and Application of Law after the Entry into Force of the Decision on Amending the Trademark Law, for the trademark application review that has not been approved before the entry into force of the decision on amending the Trademark Law, that the Trademark Review and Adjudication Board makes review decision or adjudication upon after the entry into force of the decision, and that the involved party files litigation, the People’s Court shall apply the amended Trademark Law. The filing of the opposition review by the involved party in this case was during the effective term of the 2001 Trademark Law, whereas the prosecuted adjudication was made during the effective term of the 2013 Trademark Law. Therefore, the trialing of this case should apply the 2013 Trademark Law.
Article 6 of Administrative Litigation Law of the People’s Republic of China states that, “In the trial of administrative cases, the people's courts shall examine the legality of administrative actions”. Article 10 of the Trademark Law states that, “The following signs may not be registered as trademarks:
(1) A sign only bearing the generic name, design, or model of the goods.
(2) A sign only directly indicating the quality, main raw materials, functions, uses, weight, quantity, or other features of goods.
(3) Other signs lacking distinctiveness.
If a sign listed in the preceding paragraph has obtained distinctiveness through use and can be easily identified, it may be registered as a trademark”.
The function of trademark is to distinguish the source of products and services. If the trademark applied for registration lacks distinctive features, it shall not be approved for registration.
微博 (Weibo), the abbreviation of Micro Blog, which is the name of relevant social network platform products provided by relevant Internet service bodies, including Weimeng Chuangke. In this case, the opposed trademark consists of “weibo”, the phonetic transcription (pinyin) and a symbol that resembles the Wi-Fi symbol. The Chinese characters, “微博” have their phonetic transcription (pinyin) as “weibo”. Based on the interpretation and reading habits of the Chinese public, and on the audience coverage of weibo (微博), overall, the relevant public can easily pair “weibo” with “微博” in conception and treat it as a product name.
Weibo performs information sharing, broadcasting and receiving, based on relationships of its users. It is a broadcasting social network platform that shares short and immediate messages through the following mechanism, and emphasizes instantaneity, convenience and causality. In the actual market operating activities, several weibo services, including Tencent weibo and CCTV weibo, exist, whose Internet service providers not only use “weibo” the Chinese characters as the names of the products they provide but also use “weibo” (pinyin) as product names for recognition, such as XXX weibo.
The services associated with the opposed trademark, including “news press, electronic notice board service (communication service)”, have close connection with weibo products. The opposed trademark, registered on these services, directly express the characteristics of the services and will inevitably make the relevant public form conception on the these characteristics. The trademark does not possess the function to distinguish the source of service. Therefore, application of the opposed trademark for registration violates article 11 paragraph 1 item 2 of the Trademark Law. The reasons of Weimeng Chuangke for its appeal lack factual and legal basis. The court shall not grant support.
To sum up, the original trial had a clear understanding of the facts, applied the laws correctly, and will be granted affirmation in accordance with the law. Weimeng Chuangke’s reasons for appeal have no factual or legal basis. They are not tenable in accordance with the law, and the court will not support its request for appeal. According to article 89 paragraph 1 item 1 of the Administrative Litigation Law of the People's Republic of China, the ruling is as follows:
Reject the appeal and affirm the original ruling.
The case acceptance fees for the first and second-instance trials was 100 RMB, respectively, and are borne by Beijing Weimeng Chuangke Internet Technology Co., Ltd (all have been paid)
This ruling is the final ruling.
Presiding Judge: Sha Rina
Judge: Zhou Bo
Acting Judge: Fan Xue
June 15th 2016
Clerk: Song Shuang
Source: Beijing Higher People’s Court Edited by Zhi Chan Ku (Intellectual Property Database)
