(By You Yunting) In recent, several medias have interviewed the author on the squatting of ???? trademark, which is the name of a LBS software of Tencent Inc. (the ?Tencent?), and the English name of it is WeChat. The story of it is: A company admitted in Beijing (the ?Beijing Company?) made its trademark application of ???? in Class 38 on 17th January of 2011. Tencent, who runs WeChat (????) software, made its own application several a week later on 24th. For the first application principle, Tencent?s application has been refused by the authority. And part of Beijing Company?s application has also been refused, while part of it was opposed. Currently, WeChat (????), the hit product of Tencent, is with no any records in Class 38, which is the most related class for the app.
But it seems that the problem occurred is not limited to this. As checked by the author, Tencent has only applied its trademark in Class 9 and Class 38, not covering all other classes related to the software, which also contributed to the fall of some prominent classes. By the rough retrieval, the Class 35 of online advertising, the Class 36 of finance, Class 41 of online gaming and Class 42 of program design, website and date exchange have all been first registered by third parties. And it is beyond the question that the above registration would impair the control of Tencent over the WeChat (????) brand, and the further progress of the brand. As the professional engaging in the trademark protection and has the experience in large scale company of the IPR management, the author would like to discuss the issue on how to settle the Internet companies in trademark management.
I. The process of the new product launching
The issue to some extent is mainly resulted by the internal process defect of Tencent, and that once experienced by the author. In 2005, Shanda launched three new products, including EZbox, EZpod and EZmini. But the product releasing was not informed to the management department in advance, which led to the squatting of the names of the new products and no remedy could be found to fully recover that losses. For that incidence, the IPR department as the author worked in at that time shall of no excuse to take the liability, but the development of the products is under confidence and would not be released in prior. Aside from the liability taking, we made the remedies as follows:
(1) To make the supplementary trademark application of the product;
(2) To take over the power of domain name application so that to ensure the synchronized application of domain name and trademark;
(3) To make the rules on the management of trademark, copyright and patent within the company, and to demand the signing by the IPR department before the releasing of the new product;
(4) To deliver the IPR training to all the staffs of the company, and as got known by the author in last month, a PPT made for internal training in 2005 is still spreading among the legal departments of some online game companies.
II. The problem of matching between the application and amounts of new product
If the author is still working in the IPR department, undoubtedly I would be headache with the trademark management, for what faced me is a company with millions of products and would update its library each month. And therefore you could imagine the major liability on the shoulder of me and my colleagues, for the accident may happen in every single absence of mind. Tencent, as a company with the market value above billions, shall surely have its own IPR management system, and yet not known for what reason, the giant could precluded its popular app from the management system this time. As showed in Baidu library, WeChat (????) was officially launched in January of 2011, but not until December of that year did Tencent registered its Chinese name a trademark. That may be accused of its development team is resided in Guangzhong, apart from the headquarter in Shenzhen or Beijing, the town concentrating Tencent?s main business.
In addition to the avoidance of the mistake making, to make a better job shall also be taken into account. Generally, each company shall have its general trademark application form, which indicates the scope of 10 most popular products or services. But considering Tencent has thousands of products, and each of them is with different function and service object. Once to select the generic product when registering the trademark, it is obviously that the purpose of product protection could not be fulfilled. Shanda used to own a coded product, and when made the original application, the product chose was as same as those for the online games, but as later found by the company, the original application did not include the coded product, and thereby the company has to remake its application for no other alternatives are available. But once the careful selection is made for each single product, the IPR department could not feed that demand for the limitation on the staff numbers. And for the large companies like Tencent, the outsourcing of the business to other companies would also bring the risk of trade secret violation.
In addition, the application catalogue of the trademark office is updating from time to time, and how to make the company get the most matching application over their latest product or service is also an issue for the company. Like on 14th December of 2012, the State Trademark Office updated many products that maybe applied the trademark in accordance with the latest issued classification. And the classes related to Tencent include Class 9 of computer gaming software, Class 28 of game console, Class 38 of online BBS and Class 42 of software operation [SaaS],etc.
III. The issue of synchronization of the trademark protection and product development
About two years ago, the author once wrote an article ?Legal Enlightenment of Tencent Trademark Application Strategy?, which is focusing on the trademark registration of Tencent. And of my views then, ?Tencent would make a full-class registration for the most important product, while for some ordinary product the registration would only cover the most related class?. But the question is, all the products have their own process of development, some originally not eye-catching products could be the ?star? product someday in the future. And by then, whether the trademark and other IPR protection measures of the company could keep pace with the development is essential to the company, or otherwise the problems could be foreseen.
At the end of 2011, namely the start of WeChat, the trademark registration by Tencent in Class 9 and Class 38 would not arise any problems. But with the rapid development of it since the beginning of 2012, from instant messaging software to a platform of the network communication, the trademark protection then shall keep pace with the product development. But to our disappointment, Tencent has not made that all-class registration, which has directly led to the squatting by others in the class of E-commerce, gaming and online finance. That is not a question to be seen in single, but a systematic problem. When the business department is focusing on the product development, they would not know how many skills in the trademark application. But as the management organ of IPR department, due to being trapped in the tedious and detailed works, and combating with piracy, lawsuit and competition with the rival, they are highly possible could not spare more time to the legal protection on the product. After the event, we suggest Tencent to develop a rapid protection system on the product protection. And to evaluate the rapid developed product and the protection from IPR department.
Lawyer Contacts
You Yunting?86-21-52134918? youyunting@debund.com/yytbest@gmail.com
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