Does copying an app name constitute trademark infringement?

By Wang Yadong and Lu Lei, Run Ming Law Office
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The 10 bright spots in internet development in China during the 12th Five-Year Plan published by the China Internet Network Information Centre (CNNIC) at the end of October 2015 reveal there were 594 million mobile netizens in China, an increase of 86.8% compared to the same period the previous year, and 20.5% more of them used mobile phones to go online than those using computers. Mobile phone application software (apps) has seen explosive growth, with major app stores exceeding 4 million and a greater number of netizens opting to use news, search, social networking, consumer, ticket booking, entertainment and other such apps on their handsets.

王亚东 Wang Yadong 润明律师事务所 执行合伙人 Executive Partner Run Ming Law Office
王亚东
Wang Yadong
润明律师事务所
执行合伙人
Executive Partner
Run Ming Law Office

Giving apps a memorable name is definitely an effective means of increasing downloads, with app-related trademark conflicts increasing accordingly.

The Weixin trademark dispute has been one such dispute. It arose after a company applied to register the trademark “Weixin”, in Class 38 of the Classification of Similar Goods and Services, before Tencent’s release of its “Weixin” (i.e. WeChat) instant messaging app. The “Didi Dache” trademark dispute is likewise directly related to the online smart ride hailing system called “Didi Dache”, developed by the defendant.

Meanwhile, “Xiaomi” has charged that the “Xiaomi e Dai” app infringed its trademark and is seeking RMB1 million (US$154,000) in damages, the owner of the trademark “Hepai” (Class 36) is seeking damages of RMB10 million against Shenzhen Hepai for its use of the “Hepai Zaixian” app, and the accusation that Sina’s “Paike” app infringes another’s trademark are all instances of app-related trademark conflicts.

Legal analysis

陆蕾 Lu Lei 润明律师事务所 合伙人 Partner Run Ming Law Office
陆蕾
Lu Lei
润明律师事务所
合伙人
Partner
Run Ming Law Office

Pursuant to article 57 of the Trademark Law, use, without the permission of the trademark registrant, of a trademark that is the same as its registered trademark on the same goods, or of a trademark similar to its registered trademark on the same goods, or of a trademark that is the same as or similar to its registered trademark on similar goods, where confusion is likely to be caused, constitutes trademark infringement. The main act involved in app-related trademark cases also takes the form of the concerned party using an application name that is identical or similar to another’s registered trademark. The authors argue that in the determination of app-related trademark infringement, the following core issues cannot be ignored:

Whether an app name constitutes trademark-like use. Article 59 of the Trademark Law specifies that, in the case where a registered trademark contains the generic name, depiction or model number of the goods concerned; directly designates the quality, main raw materials, functions, intended purpose, weight, quantity or other characteristic of the goods; or contains a place name, then the holder of the exclusive right to use the registered trademark does not have the right to prohibit others from making use of it.

Based on this provision, the function of the name of an app is two-fold: one is the general description of the functions of the app; and another is to indicate the indistinguishability or originality of the services. The primary issue in determining whether an app name constitutes trademark infringement is the issue of the “nature of the use”, i.e. when an app name falls into the category of descriptive use, it does not constitute trademark infringement; if not, then it constitutes trademark infringement.

With regard to this issue, valuable judicial practice was carried out in the “Sina Paike” case. Prior to Sina’s release of such apps as “Paike Client” and “Paike Assistant”, the combination of characters for “paike” had been registered for “computer programs (downloadable software)” in Class 9 by a certain company. Accordingly, the trademark registrant instituted a legal action against Sina for trademark infringement. The court found that Sina’s use of “Paike” as its app name did not constitute trademark-like use, and thus did not constitute infringement of the exclusive right to use the trademark “Paike”.

Categorizing app goods (services). Once the nature of the use has been resolved, the issues of determining whether the trademarks are similar, and whether the goods (services) are similar, are key to determining trademark infringement. To determine trademark similarity, there is little to distinguish between app-related cases and other cases, so we will not dwell on this.

In practice, the authors have found that the class of service associated with app names poses a difficulty in resolving app-related trademark conflicts. In the absence of a service labelled “apps” in the trademark registration reference work Listing of Similar Goods and Services, certain parties and their agents have simply sought to place them in software related “computer programs (downloadable)” of Class 9, or in the service category of “mobile telephone communications and computer assisted information and graphic transmission” of Class 38.

However, things are not so simple. Although apps are software, when almost every traditional industry has started to rely on software to provide services, and all of their platforms and media are mobile terminals, the determination of the essence of their services should still depend on the content and targets of the services, and the method of their provision. For example, where a business that engages in the provision of travel services uses an app to provide reservations, information and other such services, the class of services that it provides should be deemed “travel services”, not “software”. Accordingly, the authors argue that the perspective that an app name necessarily infringes another’s trademark registered for Class 9 or 38 is erroneous. The judgment in the “Didi Dache” case has relatively high reference value in this.

Potential for confusion. Determination of the potential for confusion is the final basis for determining trademark infringement. Even if the second issue has already been resolved, i.e. the similarity of the trademarks and the similarity of the goods (services), the distinguishability of the mark remains to be determined. The distinguishability not only depends on the recognizability of the mark itself, but also on the usage of a trademark. The more widespread the usage, the more distinctive a trademark becomes, the stronger the degree of protection it receives, and the greater the increase in the potential for confusion. As to the subjective intention of the alleged infringer to cause confusion, this could have occurred when the alleged infringer knew or ought to have known that the trademarks were owned by other people and still named his own app after such trademarks.

Although the app issue is new, applying the traditional theory of trademark infringement to conduct an analysis remains apropos. Of course, it is much easier to guard against legal risks if a party considers and assesses things from a trademark perspective before making an app available online.

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