The new Trademark Law of the People’s Republic of China, which came into force on May 1, 2014, stipulates for the first time that an application may be made to register a sound as a trademark, representing one of the major changes in the new Trademark Law. Since then, Chinese and foreign entities who seek a trademark protection for their sounds have been rushing to make applications. Up to now, there have been about 500 sound mark applications in China, but only 21 sound marks were allowed to be registered and only 1 sound mark was granted in Category 12, i.e. vehicles and other related products. BMW AG, represented by JunHe’s trademark team in its application to register a melody as a sound mark, was granted the trademark and became the only auto company who successfully registered a sound mark in China. BMW's unique melody has also become one of the few trademarks consisting of melody only without any text.
The sound mark of BMW is a piece of instrument music that is original and full of the High-tech feeling. It is widely used in commercial activities and played at the end of BMW commercials. However, the sound mark was initially rejected in the substantive examination by the Trademark Office because of its lack of distinctiveness. Then, JunHe’s trademark team represented BMW in filing an application for reexamination of the rejected trademark with the Trademark Review and Adjudication Board of SAIC (“TRAB”).
Since the sound mark is a new type of trademark in China and it is also a new type of unconventional trademark in many countries around the world, the Chinese examination authority adopts a rather vague standard for such trademark examinations, has few prior cases to refer to, and therefore is particularly strict in granting such trademarks. In preparation for the reexamination application, JunHe’s team conducted deep legal research, collected a large amount of evidence of trademark use, and made a detailed classification and sorting of such evidence. The distinctiveness of the sound mark was fully demonstrated mainly based on the originality and inherently distinctive features of the mark, as well as the ability to identify the sources of goods via its wide use, which laid a foundation for the registration of the trademark. In addition, JunHe’s team studied laws and regulations of other countries on sound marks and collected well-known cases of sound mark registrations. The grounds for the distinctiveness of the sound mark as summarized by JunHe’s team was fully upheld by TRAB.
As such, the process of nearly three years to register BMW's “music” as a trademark was successfully concluded. The registration of the melody as a sound mark was approved in the reexamination after being initially rejected, which is of positive significance to both BMW and JunHe’s trademark team:
1. The timely and effective protection for the new type of trademark further improves the basis of BMW's intellectual property rights in China;
2. As the first entity who obtained the protection of sound mark, BMW has enhanced and improved its brand awareness among consumers;
3. JunHe’s team has acquired experience in handling cases on granting and affirming rights to special types of trademarks such as sound mark.
The leading partner of this project was Ms. XU, Chumeng (Jessica).