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Since sound marks were first brought within the scope of protection by the 2014 revision of the Trademark Law, the registration of sound marks has consistently been a focal point in the trademark field. However, to date, the number of sound mark applications in China is only 939 (data as of 2 December 2024, published by the China National Intellectual Property Administration), and the number of registrations that have actually been granted is even smaller. Reference data show that as of June 2022, there were approximately 898 sound mark applications for registration in China, among which only 47 applications were successfully registered[1]. Compared with the current number of more than 48 million valid trademark registrations, the number of sound marks is extremely small.
The reasons for this, apart from the relatively small volume of use in market activities, lie mainly in the fact that sound marks have weaker distinctiveness compared with traditional visual marks, and are naturally deficient in meeting the “distinctiveness” requirement in trademark examination. As a result, they are often refused on the ground of “lack of distinctiveness” under Article 11 of the Trademark Law.
The eventual registration of Intel’s sound mark upon judicial review constitutes a valuable exploration of the current standards for approval and registration of sound marks. This article intends to take this as an entry point to provide feasible solutions for market entities to obtain registration and protection of sound marks.
I. Brief Introduction to the Administrative Litigation Case Concerning Intel’s Sound Mark
Intel Corporation’s sound jingle “deng, deng-deng-deng” is well known to the relevant public. This sound sign was applied for registration as a trademark in 2014 and was approved for registration in 2017. It is noteworthy that this prior mark was registered smoothly without undergoing a refusal review procedure.
In 2021, due to brand upgrading needs, Intel updated the design of its word mark “INTEL” and simultaneously updated its classic “deng, deng-deng-deng” sound sign. Intel applied for registration of this new version of the sound sign as a trademark. The China National Intellectual Property Administration refused the application on the ground that the sound mark fell under the circumstance of lack of distinctiveness as provided in subparagraph (3) of paragraph 1 of Article 11 of the Trademark Law. Intel instituted proceedings against the refusal review decision.
In the course of the litigation, Intel submitted media reports, promotional materials for relevant products, and other evidence to demonstrate that, through long-term promotion and use, the sound sign had established a corresponding relationship with Intel and was capable of distinguishing the source of goods. The court ultimately found that:
As a sign perceived through hearing to distinguish the source of goods or services, the assessment of whether a sound mark is distinctive requires consideration of multiple factors such as its rhythm, melody, pitch, and duration, and a comprehensive assessment in conjunction with the designated goods to determine whether, as a whole, it forms characteristics with a high degree of recognizability, thereby enabling it to distinguish the source of goods or services.
Specifically, in this case, the mark in dispute is a sound with a certain melody, rhythm, and pitch. It does not belong to sounds that already exist in nature, nor is it a sound or music commonly encountered in daily life. Although its duration is relatively short, its overall sound effect is unique and inherently distinctive. Moreover, the melody of the mark in dispute is consistent with that of the plaintiff’s prior registered mark, with only minor differences in pitch and rhythm. The media reports, promotional materials, and other evidence concerning relevant products additionally submitted by the plaintiff at the litigation stage are sufficient to prove that the plaintiff’s sound mark (deng, deng-deng, deng-deng) has, through long-term promotion and use, established a unique corresponding relationship with the plaintiff, enabling the relevant public to associate the sound with the plaintiff. Therefore, the mark in dispute, as a whole, possesses the distinctive features required of a trademark and is capable of distinguishing the source of goods. It does not fall under the circumstance of “other marks lacking distinctive features” that may not be used as trademarks as provided in subparagraph (3) of paragraph 1 of Article 11 of the Trademark Law.
Subsequently, the China National Intellectual Property Administration rendered a new decision, holding that the new version of the sound mark is distinctive and should be approved for registration.
II. Standards for Examination and Judicial Review of the Distinctiveness of Sound Marks and Judicial Practice
1. Standards for Examination and Adjudication of Sound Marks
For a long time, traditional visual marks such as words, numerals, and devices have been the main forms of trademark use and registration in China. The relevant public has developed a habitual visual perception, whereby they can easily identify a sign as a trademark when they see it on certain goods or services. By contrast, although some market entities also have a need to use non-visual sound marks, due to cognitive habits, the relevant public is more likely to perceive the sound sign they hear as background sound or advertising, rather than forming a perception equivalent to that of traditional trademarks. For example, in the Xiaomi mobile phone ringtone case[2], the Beijing High People’s Court held that the sound mark at issue “is easily perceived as the goods themselves, a musical piece, or background music”; in the Luzhou Laojiao “Guojiao 1573” case[3], the Beijing Intellectual Property Court held that although the sound mark at issue “is a musical piece independently created specifically for Luzhou Laojiao Company, from the perspective of the usual cognitive habits of the relevant public, it is easy to perceive the mark in dispute, which contains 13 bars, includes humming, and lasts as long as 30 seconds, as background music, a song, or the musical piece itself, and difficult to perceive it independently as a trademark.”
This means that, compared with traditional visual marks that already conform to the cognitive habits of the relevant public, sound forms are less likely to be perceived as trademarks and therefore naturally lack distinctive features. Precisely for this reason, China has set a higher standard of proof for distinctiveness in the registration of sound marks than for traditional visual marks.
As early as the 2016 Trademark Examination and Adjudication Criteria, it was explicitly provided that “as a general rule, sound marks need to acquire distinctiveness through long-term use,” which can be regarded as an official recognition of the inherent lack of distinctiveness of sound marks. The 2021 revised Trademark Examination and Adjudication Guidelines further provide that “as a general rule, sound marks lack inherent distinctiveness and need to acquire distinctiveness through long-term or extensive use, thereby establishing a stable connection with the applicant and possessing the function of distinguishing the source of goods or services,” and directly incorporate “lack of inherent distinctiveness” into the examination standard. They also require that applicants for sound marks “must provide sufficient evidence to prove that the sound mark has acquired distinctiveness through long-term or extensive use.” The degree of such “sufficient evidence” is that “the relevant public, upon hearing the sound, first associates it with goods or services from a specific source, rather than with the sound itself,” which clearly sets a very high threshold for evidence of use. Under this standard, it is not easy for sound marks to obtain registration.
2. Judicial Review Practice Concerning Sound Marks
Although publicly available records show that dozens of sound marks have been approved for registration, a search of judicial precedents reveals that, apart from the present Intel sound mark case, the only case in which a sound mark ultimately obtained registration by overturning a refusal review decision through judicial review is the Tencent QQ alert tone case[4].
As of December 2024, a search using “sound mark” as a keyword in the Zhichanbao database yields a total of 92 judgments. Among them, the Beijing Intellectual Property Court rendered 78 first-instance judgments and 9 first-instance rulings (all of which are rulings on withdrawal of actions without substantive content), and the Beijing High People’s Court rendered 5 second-instance judgments. From the content of these judgments, apart from 3 second-instance judgments of the Beijing High People’s Court and 9 first-instance judgments of the Beijing Intellectual Property Court that are indeed judicial review cases concerning sound marks, the remaining 71 judgments are unrelated cases that merely cite statutory provisions containing the term “sound mark.”
In other words, other registered sound marks were, in fact, approved directly without undergoing administrative refusal review procedures. According to the search results, these registered sound marks, such as the sound mark of China Radio International, the sound mark of Nokia Corporation, and the YAHOO sound mark of Yahoo Inc., were mostly applied for and registered smoothly around the time when the sound mark system was newly introduced in the 2014 revision of the Trademark Law, including Intel’s previously registered old version sound mark. This may have been motivated by the need to activate the sound mark provisions following the 2014 revision of the Trademark Law. Subsequently, from the perspective of judicial practice, whether in the Tencent QQ alert tone case or in the present Intel renewal registration case, the evidentiary requirements in judicial review for “sufficient evidence to prove that the sound mark has acquired distinctiveness through long-term or extensive use” are extremely stringent.
Take the Tencent QQ alert tone case as an example. In that case, Tencent submitted a large volume of evidence and data, such as the certificate of the Guinness World Record for “the most people online simultaneously on a single instant messaging platform” obtained by the QQ software, the Reply on Recognition of the “QQ” Trademark as a Well-known Trademark, the earliest version and launch time of the QQ software, statistics on the QQ software’s market share in the instant messaging software market from 2003 to 2008, statistics on user preference shares for major instant messaging software in China from 2009 to 2010, and statistics on the number of users covered by the QQ software from 2012 to 2013, thereby fully proving the acquired distinctiveness of the sound mark at issue through use in terms of the length of use and the breadth of the user base. The court ultimately held that “upon examination of Tencent’s evidence, it can be found that the applied-for mark has been used by Tencent for a long period and on a large scale,” and on this basis, the mark had acquired distinctiveness and could be registered as a trademark.
It should be noted that, in the Tencent case, the Beijing High People’s Court also held that “as a general rule, a sign that has acquired distinctiveness through use on one good or service item does not automatically acquire distinctiveness on other goods or services merely because of its use on that particular good or service. In examining trademarks that have acquired distinctiveness through use, the principle of ‘specification of goods and services’ must be followed, so as to avoid generalization and overextension in the process of recognizing acquired distinctiveness.” On this basis, the court held that the mark at issue could be registered only in respect of instant messaging software-related services on which it had been used continuously over a long period, and refused registration for services such as “television broadcasting, news agencies, and telephone conferencing,” on which the mark at issue had not been actually used. It can be seen that judicial review not only imposes high requirements on the “sufficiency” of evidence proving acquired distinctiveness through use, but also strictly controls the specific goods covered by such acquired distinctiveness.
In addition, in the litigation concerning Intel’s new sound mark, even though Intel’s old version sound mark had already been approved for registration, the court adopted a very cautious attitude and a high standard of proof in determining whether the new sound sign could function as an indication of the source of goods. The court re-examined whether the new sound sign had acquired distinctiveness through long-term or extensive use, and did not automatically recognize the distinctiveness of the new sound sign merely because the old version sound mark had been registered.
From the above cases in which sound marks were approved for registration upon judicial review, it can be seen that judicial practice adopts a comprehensive and strict standard in examining the requirement that applicants for sound marks “must provide sufficient evidence to prove that the sound mark has acquired distinctiveness through long-term or extensive use.”
III. Pathways to Enhance the Distinctiveness of Sound Marks to Obtain Registration
Precisely because the current examination standards presume that sound marks lack inherent distinctiveness, in many current cases, once the trademark examination authority encounters a sound mark, it directly applies subparagraph (3) of paragraph 1 of Article 11 of the Trademark Law, refuses the sound mark as “other marks lacking distinctive features,” and presumes that the sound mark is non-distinctive.
Under the current adjudicatory context, overcoming the lack of distinctiveness of sound marks still mainly relies on the standard of “acquired distinctiveness.” However, the current Trademark Law does not specify the concrete requirements for sound marks to “acquire distinctiveness.” Although the Trademark Examination and Adjudication Guidelines, in the section on examination and adjudication of sound marks, provide that “a comprehensive assessment shall be made by taking into account factors such as the auditory perception and sound effect of the sound mark, the manner of use, the duration and intensity of continuous use, the use of similar sounds by operators in the same industry, the trademark use practices in the relevant industry, advertising and promotion of the sound mark and its effect, and the level of awareness among the relevant public,” this provision still needs further refinement.
In light of current examination practice, the requirements for acquired distinctiveness of sound marks are, in effect, almost equivalent to the level of recognition required for well-known trademarks, resulting in a general situation where “only sound marks that are well-known or close to being well-known can be registered,” or “once a sound mark is registered, it is already well-known.” The conditions for approval of registration are significantly higher than the requirement that ordinary word or device marks be capable of distinguishing the source of goods or services. It is expected that the standards for examining the distinctiveness of sound marks will gradually become clearer and more refined as practice develops. For applicants of sound marks, although it is difficult to obtain registration under the current examination standards, it is not impossible. In light of the existing examination standards, the author believes that applicants may overcome the deficiency in distinctiveness of sound marks and strive for registration and protection by focusing on the selection of sound marks and the improvement of evidence of use:
1. Avoid, at the Initial Selection Stage, Sound Signs that Lack or Have Weak Inherent Distinctiveness
Although the current Trademark Examination and Adjudication Guidelines presume that “as a general rule, sound marks lack inherent distinctiveness,” and that distinctiveness can only be acquired through extensive evidence of use, from the perspective of the essential function of trademarks, namely, distinguishing the source of goods or services, a sound sign that lacks or has extremely low inherent distinctiveness cannot, even after extensive use, perform the function of distinguishing the source of goods or services and thus cannot acquire distinctiveness. The current Trademark Examination and Adjudication Guidelines list certain sound forms that are explicitly deemed non-distinctive, such as:
(1) Sounds that directly indicate the content, target consumers, quality, function, purpose, or other characteristics of the designated goods or services and therefore lack distinctive features. For example: the sound of piano playing designated for “musical instruments.”
(2) Sounds that are unavoidable or commonly occur when goods are used or services are provided. For example: the “clattering” sound of counting money made by a banknote counter designated for “banking” services.
(3) Sounds or music that are generic or commonly used in the industry. For example: the main melody of the “Wedding March” designated for “planning and arranging wedding services.”
(4) Sounds that are overly simple or overly complex. For example: simple, ordinary tones or melodies; a complete or lengthy song or musical piece.
(5) Phrases sung or chanted in a normal tone or with a simple melody. For example: singing “Gongxi ni facai” (congratulations on getting rich) in a simple melody.
The above examples lack distinctiveness either because the sound is too closely associated with the goods or services, or because it is a functional sound that accompanies the goods or services themselves, thereby preventing it from performing the function of distinguishing the source of goods or services. If an applicant intends to obtain registration and protection of a sound mark, it should, at the stage of designing the sound sign, select a sound with relatively high recognizability in light of the designated goods or services, and avoid falling into the above clearly non-distinctive circumstances.
2. Improve Evidence of Acquired Distinctiveness of Sound Marks by Focusing on the Correspondence Between the Sound Sign and the Provider of the Products
First, in terms of correspondence, unlike traditional visual marks that can be directly affixed to products or transactional documents to form a corresponding relationship, sound marks usually require specific playback media to be played independently and are separate from the products. This makes it difficult for traditional evidence of sales, such as contracts and invoices, to independently prove that the sound mark has acquired recognition through use and has been perceived by the relevant public as a trademark. In terms of evidentiary form, this is more challenging than for visual marks. For example, in the Luzhou Laojiao sound mark case, the Beijing Intellectual Property Court held that “the existing evidence is insufficient to prove that the mark in dispute must have been used in the course of promotion and sales, and therefore the sales volume of Luzhou Laojiao’s alcoholic products such as ‘Guojiao 1573’ is insufficient to prove the actual use of the mark in dispute.”
To demonstrate the corresponding relationship between a sound mark and its products and provider, the use of the sound mark may be accompanied by the simultaneous appearance of visual marks such as word marks. For example, whenever the sound effect of a specific sound mark is played, the provider’s word mark may be displayed on the screen or mentioned in the audio, thereby forming a one-to-one corresponding relationship among the sound, the word mark, the products, and the provider, and linking the sound to the provider. The once-popular “yang yang yang” (sheep, sheep, sheep) advertisement of Hengyuanxiang is a typical example.
Second, in terms of types of evidence, emphasis should be placed on demonstrating sales through advertising and promotional evidence to prove the recognition of the sound mark. If, in the context of acquired distinctiveness of traditional visual marks, sales and advertising are parallel types of evidence, then in the context of sound marks, advertising evidence is the cornerstone supporting sales evidence. Unlike the fixed written form of sales documents, advertising and promotion can take various and flexible forms. In particular, video advertising can fully demonstrate the close correspondence among the sound mark, the word mark, the products, and the provider. It can be said that advertising and promotional evidence is the foundation for proving the acquired distinctiveness of sound marks. The importance and recognition of promotional evidence can also be seen from the court’s findings in the Intel sound mark litigation.
Finally, actual consumer perception should not be overlooked. The ultimate focus of proving acquired distinctiveness of a sound mark is whether consumers can identify it as a trademark and thereby distinguish the source of specific goods or services. Therefore, the demonstration of the effect of promotion of the sound mark and the intensity of promotion, such as the length of time and breadth of coverage, is equally important, if not more so. Only when consumers truly perceive it as a trademark can the sound mark be said to have acquired distinctiveness. In this regard, consumer comments and consumer recognition surveys may all serve as evidence of acquired distinctiveness.
Conclusion
With the rapid development of the mobile internet, audio and video content has become increasingly prevalent, and consumers’ experience of and attention to audio and video are gradually increasing. As a dynamic sign, sound marks are more compatible with advanced network technologies than traditional word or device marks, and they align with the characteristics of large-scale and rapid dissemination over the internet. They can even, to a certain extent, transcend geographical and linguistic barriers and spread rapidly worldwide.
With the diversification of marketing media, sound marks, as signs indicating the source of goods or services, may receive more attention and wider application in the future and become an important component of corporate brand development. As trademark examination standards are continuously refined and judicial practice accumulates, it is foreseeable that the demand for registration of sound marks in China will gradually increase and that sound marks will play an important role in brand building and market competition. Market entities intending to obtain registration and protection of sound marks should plan and deploy sound marks as early as possible, making sound another channel through which consumers become acquainted with enterprises and brands.
