What Tencent's Trademark Strategy Tells Us?

By You Yunting

Today, we would like to introduce how Chinese enterprises protect their brands. Months ago, the news reporting Tencent (SEHK: 700)’s QQ trademark registration in all classes, including condom, is heatedly spread among Chinese netizens. From the report, we saw the local IT giant registered more than 1, 000 trademarks in the classes to protect its well-known mark “QQ” avoiding the free-riding by others, among which the class of food, matchmaking and condom is listed. Unlike the author who criticized Tencent a muddled thinking, we prefer the applications as the company’s thoughtful and overall strategy on trademark protection. Now, here’re our conclusion on Tencent’s experience and the analysis:

I. Why so much weird trademarks have been applied by Tencent?

I once worked in a big company in charge of the trademark management; therefore, I would rather say that the trademark strategy of Tencent is more proper and approving. First, food could by the peripheral products of online games, and matchmaking could also be kind of online business just like what jiayuan.com is doing now, from whom we have see an achievement on that business. For Tencent is the internet company with multi-services, it shall be no strange for the company to first apply the trademarks in such fields.

Second, as the free-riding on famous brands is not rare in the current era of market economy, which has and is puzzling the noted companies, who therefore would like to register their core marks in all 45 classes for an overwhelming protection. However, such protection could lead to an adverse consequence, with the influence on the establishment of well-known trademark included.

Currently, China has no independent procedure to establish the well-known trademark, which is determined mainly through the administrative organs and the judicial offices. For the administrative way, it’s mainly determined by the trademark review and adjudication board and the trademark office in the process of trademark opposition, dispute and complaints, and on the other hand, the judicial establishment will be considered in single cases.

But whatever the way is, once the registration of the trademark has covered all the classes, thereby the mark could hardly be judged or determined as the well-known one, for with the registration, it could enjoy the trans-class protection which is also the purpose of the well-known trademark evaluation’s purpose. Considering a relative short 20 years of market economy development in China, the understanding on the trademark verification by local companies is staying at the preliminary stage, in which the title of the well-known is more to be used as kind of propaganda rather than the measures against the infringement. And that, I may say, is far from the original intention of the well-known trademark system.

Back to Tencent’s case, although all-class registration may influence the well-known trademark determination, most companies tend to insist their choice after valuation just like Tencent did.

All-class registration is actually covering all products or services that man may manufacture and provide. Generally, when make apply for such registrations, the applicant may choose a product in each subclass. As to Tencent’s choice on condom products, it might for two reasons: 1) by random selection according to trademark agency written application; or 2) to register first so that no embarrassing result like squatting could be avoided.

II. What could we learn from Tencen’s strategy?

Tencent, as a model company in the industry, has showed its glittering in the trademark registration, like important marks in all 45 classes and related classes accurately linked to some products’ marks. All these prove the ability of Tencent’s IPR staffs or the agents entrusted.

1. Full protection on brands with trademark strategy. You may protect your company names, marks through the application of registration, and especially for those major businesses, the names or marks of which shall be first applied before the launching. Surely, in addition to the brands intended to use, including the name and marks as mentioned above and the same below, the brands could be protected more thoroughly once the similar or related ones could also be applied.

2. Accurate application over the trademarks. Tencent has made a more accurate selection on the target class for its ordinary businesses, like the products of online game, it’s only registered in class 9 and 41, without class 28 for game console. In my opinion, any application shall be prior considered prudently within a proper scope, so that the characteristics of the product could be highlighted.

3. The perceptiveness of the trademark application. The class of food and matchmaking selected by Tencent is actually not covered by its current products or services, but with the perceptiveness, any possible products or services from the company or those contained in the name itself in essence shall be included in the current application.

You may CLICK HERE to see how we provide the service of trademark application in China.

Also, you may CLICK HERE to check other services by us in trademark.

Trademark Lawyer Contacts

You Yunting

86-21-52134918

youyunting@debund.com, yytbest@gmail.com

For further information, please contact the lawyer as listed above or through the methods in our CONTACTS.

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