Loss of “WeChat” trademark: Why didn’t Tencent take it seriously?

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"32/81, 39.5%".

This is the proportion of "WeChat" trademarks that Tencent has registered and is in the process of registering among all "WeChat" trademarks.

Simply put, among the 81 "WeChat" trademarks that have been submitted to the Trademark Office of the State Administration for Industry and Commerce (hereinafter referred to as the "Trademark Office") for trademark registration review or have completed trademark registration, only 32 were submitted by Tencent, and more than 60% of the "WeChat" trademarks were not submitted by Tencent and do not currently belong to Tencent.

What’s worse is that because a large number of “WeChat” trademarks have fallen into the hands of others, Tencent is busy “filing lawsuits to protect its rights” everywhere.

Recently, an administrative lawsuit concerning the "WeChat" trademark registration dispute was concluded at the first instance. The plaintiff, Chuangbo Asia Pacific Technology (Shandong) Co., Ltd. (hereinafter referred to as "Chuangbo Company"), was dissatisfied with the rejection of its "WeChat" trademark registration application by the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce (hereinafter referred to as "Trademark Review and Adjudication Board") through the objection procedure, and filed an administrative lawsuit with the Beijing Intellectual Property Court, requesting the court to revoke the decision made by the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce to refuse to approve the registration due to "adverse effects".

After the case was heard in court, the first-instance court rejected the plaintiff Chuangbo Company's lawsuit and upheld the Trademark Review and Adjudication Board's review decision not to approve the registration.

As we have not seen the full text of the judgment, it is difficult to make too many comments on the basis and reasons for the judgment in this case. Therefore, we will not discuss here how the "WeChat" trademark registration application, which was filed first but not submitted by Tencent, constitutes an "adverse impact".

However, more than 60% of the "WeChat" trademarks do not currently belong to Tencent, which is enough to illustrate Tencent's "mistake" or "carelessness" in its "WeChat" registered trademark protection strategy.

Too late: Tencent was not the first to apply for the “WeChat” trademark

The results of a search on the Trademark Office website (China Trademark Network) show that as of March 15, 2015, there have been a total of 81 applications for registration of the "WeChat" trademark.

Judging from the status of registered trademark applications, among the 81 "WeChat" trademarks, 38 have been "successfully registered (including transferred)", 16 have been "invalidated", 8 are "under objection", and the rest are under registration review.

From the perspective of the applicant for registered trademarks, among the 81 "WeChat" trademarks, only 32 were submitted by Tencent, and the other 49 were submitted by other companies or individuals.

Judging from the time of trademark registration application, the earliest application for "WeChat" trademark registration was submitted on November 12, 2010, but it was not submitted by Tencent, but by Chuangbo Company mentioned at the beginning of this article. The company submitted three "WeChat" trademark registration applications at one time.

As we all know, WeChat was planned and launched by Tencent in October 2010 and was created by the product team of Tencent Guangzhou R&D Center. Ma Huateng determined the name of this product to be "WeChat" in the product planning email.

On January 21, 2011, WeChat released the 1.0 beta version for iPhone users. This version supports importing existing contact information via QQ numbers, but only has simple functions such as instant messaging, sharing photos, and changing avatars.

It can be seen that although it took four months from the internal project establishment in October 2010 to the release of the WeChat 1.0 test version on January 21, 2011, it is puzzling that Tencent did not submit an application for registration of the "WeChat" trademark as early as possible during this period.

In fact, Tencent first submitted an application for the registered trademark of "WeChat" on January 24, 2011. In other words, Tencent formally submitted the application for the registered trademark of "WeChat" to the Trademark Office three days after the release of the WeChat 1.0 beta version.

Putting out fires everywhere: Tencent is forced to take a multi-pronged approach to acquisitions and dissent

Data from the Trademark Office website shows that among the 81 registered "WeChat" trademarks, 16 are "invalid", 8 are "under objection", and among the 38 "successfully registered" trademarks, 4 have been transferred.

So what does this mean?

First, the 16 "invalidated" "WeChat" registered trademarks may involve two situations: First, during the objection period, that is, within 3 months from the date of the preliminary review announcement, a third party initiated an objection procedure with the Trademark Review and Adjudication Board, and the Trademark Review and Adjudication Board ruled not to approve the registration. Second, after the registration was approved, it was suspected of being registered by fraud or other improper means, and the Trademark Office took the initiative to declare it invalid or a third party requested the Trademark Review and Adjudication Board to declare it invalid.

Secondly, the eight “WeChat” registered trademarks that are “under objection” indicate that these trademarks are still in the process of trademark objection by the Trademark Review and Adjudication Board, and the Board has not yet made a ruling not to approve the registration.

Thirdly, the four “transferred” registered trademarks of “WeChat” indicate that these four trademarks have been “successfully registered” and cannot be revoked through the objection procedure or the “trademark invalidity” declaration procedure has not yet been initiated, but have been acquired by the “next buyer”.

Regardless of whether it is "invalidated", "under objection" or "transferred", although there may be other people who come forward, the actual manipulator behind it may be Tencent, because Tencent is the only direct stakeholder in the "WeChat" trademark.

It can be seen from this that because Tencent acted too late, the "WeChat" trademark was registered by others first. After the WeChat business continued to grow and develop, Tencent was forced to attack from all sides and adopt multiple means such as acquisition and objection to recover the "WeChat" trademark.

If it weren't for Tencent's deep wealth, the brand loss or waste of resources this "slowness" would have brought to the company would have been quite shocking.

Lessons from WeChat: Even if a product fails, the brand must be protected in advance

Tencent's application for registration and protection of the "WeChat" trademark spanned four years, with the earliest application being on January 24, 2011 and the latest on October 30, 2014.

Judging from Tencent’s own trademark protection strategy and time span, Tencent may have been uncertain about the future development of WeChat in the early stage, as shown in two aspects:

On the one hand, Tencent's earliest trademark registration application submitted in January 2011 only involved two categories, namely computer-related (Class 9) and television-related (Class 38).

On the other hand, as WeChat continued to grow and develop, Tencent began to increase its trademark registration protection for WeChat in various categories starting in 2012, and this status continued until October 2014.

This trademark registration application strategy of "late registration application and long time span" reflects Tencent's "inadequacy" in protecting its own product or service brands.

In fact, this is not the first time that Tencent has been "slow to react" or "regretted" trademark registration protection. In the early days of Weibo business, Tencent registered the "Tencent Weibo" trademark in 2011, but it was not until January 2014 that it filed for "Weibo" trademark registration. At that time, the "Weibo" trademark had already been acquired by Sina.

Going back further, in the early days of Tencent's entrepreneurship, the QQ software, which is now the world's largest client software, was originally named "OICQ". The reason why it changed its brand from "OICQ" to the current "QQ" was precisely because OICQ was suspected of infringing the trademark rights of the early well-known instant messaging software ICQ.

If domain name protection is also included in the scope of brand protection, then Tencent's "failures" will be even greater. Until now, the "QQ.cn" domain name does not belong to Tencent. If hundreds of *** domain names around the world are added, the brand resources lost by Tencent will be "innumerable".

Obviously, the twists and turns in Tencent's "WeChat" trademark protection journey have once again shown that even if a new product may "die" in the future, protection of various brand resources including trademarks, domain names, etc. should be done in advance at the beginning of the project.

Otherwise, what awaits enterprises is only "endless troubles" and "exhaustion".