The newly established IP court in Beijing has
ruled that Trunkbow Asia Pacific (Shandong) Co is not permitted to register the trade mark 微信 (WeiXin), even though it filed for this trade mark before the Internet giant Tencent, which operates the messaging service 微信. This gives hope to big brand owners in China, especially in light of China’s first-to-file trade mark system. 微信is an instant messaging app with over 44 million active monthly users and around 1.1 billion registered accounts. The service was launched on 21 January 2011 but Tencent did not file for the trade mark until 24 January 2011. The fallout from this delay (it has been reported that Tencent has had to negotiate with a small Beijing company which also filed for微信 before Tencent’s launch) serves as a useful reminder for brands to consider trade mark protection as early as possible prior to their launch. In this case, Trunkbow had not only filed for微信 before Tencent but also before Tencent had even commenced use of the mark. There was also no conclusive evidence of bad faith. However, despite all of the above factors and noting that bad faith is a factor to be considered by the courts when assessing the first-to-file principle, the IP court in Beijing denied registration of the trade mark on the basis that registration of 微信 by Trunkbow would lead to public confusion in view of the fame and reputation that Tencent has developed in微信. This conclusion is especially important for well-known brand owners operating in China or planning to commence trading in China. It has been reported that Trunkbow will appeal.
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