Since the rise of mobile commerce, sales and promotional champaigns are no longer confined to third party e-commerce and social media platforms, and to many brands, the new battlefield is now the brands’ mobile apps. Mobile apps have nowadays gone beyond as platforms providing information on the brands and their products, but often as key tools to the brands’ loyalty programmes, online sales and interaction with customers.
The brand’s mobile app is an important intellectual property asset and brand owners should be mindful of protecting their mobile apps through trademark, copyright and patent applications when entering the Chinese market. We will discuss below common issues faced by brand owners when striving to protect the intellectual property rights of their mobile apps in Mainland China.
I. TRADEMARK PROTECTION
1. What should I register as trademarks?
Brand owners should seek trademark protection of the key elements of their mobile apps, including the app names (abbreviate / alias), app icons, avatars and other distinctive names, signs and symbols used in relation to the app.
For foreign brands launching mobile apps in English or foreign language, it may be also worth registering Chinese language marks for your mobile app names to prevent infringers from free-riding on your reputation and fame.
2. What if my mobile app name is too suggestive?
A lot of mobile app names contain slogans and general positive connotations, or are suggestive of the goods / services in question. The Chinese National Intellectual Property Administration (CNIPA) may consider such names as non-distinctive and/or descriptive, and not registrable as a trademark.
In order to enhance the chance of success to register the mobile app names, brand owners should keep the app name short in length and avoid common expressions and descriptive terms. Brand owners may also consider adding other distinctive elements such as their house marks and logos to the trademark to be filed.
Most importantly, brand owners should register their mobile app names as early as possible to lower the risk of having the names becoming generic through use. This is especially so for mobile app names which are relatively simple and suggestive.
3. Which classes to file the trademark applications?
In general, it is recommended to protect mobile apps by trademark registrations under Class 9 which covers digital and electronic goods as well as application software and downloadable software.
However, brand owners should also consider protection beyond Class 9 to cover special features of the apps and the goods/services offered by the apps. For example:
- display goods and services through electronic means to facilitate home shopping, administration of consumer loyalty programs under Class 35,
- financial services under Class 36,
- providing instant messaging services under Class 38,
- providing information relating to sports and entertainment under Class 41,
- development and design of mobile applications under Class 42, and
- providing information relating to health and beauty under Class 44.
Obtaining a comprehensive scope of protection is especially useful in battling against potential infringers or counterfeits of your mobile apps.
4. How to defend against non-use cancellation?
The registered trademark will be vulnerable to non-use challenge after being registered for 3 years. Brand owners should therefore keep a good record of the use evidence of the trademarks for their mobile apps. In particular, it should be noted that:
- The use evidence should be aimed and directed at consumers in mainland China, such as availability of local hotline or customer support on mobile apps, or evidence of actual in-app purchase by Chinese consumers. Use evidence in Hong Kong, Taiwan and Macau does not constitute use in mainland China.
- The use evidence should be dated, and brand owners should consider obtaining timestamped or notarized screenshots of the interface of their mobile apps on a regular basis.
- The whole evidence chain should be preserved. Apart from screenshots of the apps on Chinese app stores, other evidence, including app analytics reports generated by app stores, advertisement and promotional materials, agreements with the Chinese app stores, Chinese media articles introducing the mobile apps, etc. shall be preserved.
If for any reason valid use evidence may not be collected or docketed, re-filing in a regular time interval of 2 or 2.5 years will be something worth to be considered by owner.
II. COPYRIGHT AND PATENT PROTECTION
1. Do I need copyright recordal?
Furthermore, copyright plays an important role in protecting other valuable assets, such as the user interface, art works and graphics, music, words, scripts, and other works used and published in the mobile app.
While it is possible to claim your copyright without registering it, it is highly recommendable to record the same in China. It is because copyright recordal certificates serve as a prima facie proof of existence and ownership of your copyright. This saves the time and costs in discharging the burden to prove your prior rights in the works in enforcement stage.
2. Is my mobile app patentable?
According to the decision of the CNIPA on Amending Guidelines for Patent Examination – software, computer programs per se are still not patentable, but software recorded on computer-readable medium is now patentable in China. Therefore, while filing invention patent application for your mobile apps, the claims should be carefully drafted to avoid patent ineligibility. Brand owners should also be aware that novelty and high level of inventiveness are the essential elements for obtaining patent registration.
On the other hand, mobile apps are often displayed in graphical user interface (GUI) form on mobile terminals, and such GUI is patentable under design patent in China. Brand owners should take note that mere aesthetic designs are not patentable and the GUI to be patented must relate to the human-machine interaction. In China, the interface per se is not patentable, and the GUI must be embedded within a product to obtain protection. A design patent application for GUI should clearly indicate the field of the product in which GUI is being used and shall clearly display the size and position of the GUI proportionate to the product.
III. KEY TAKEAWAYS
Mobile apps are rapidly developing in this digital era and it is important for brand owners launching their mobile apps in mainland China to protect their apps by timely and tactfully obtaining trademark, copyright, and patent registrations to protect each and every element of their mobile apps. In case infringement issues arise, filing complaints with the Chinese app stores is often the most cost-effective and straightforward way to tackle the issue, and by relying on the all-rounded registrations, such complaints will more likely be accepted and processed promptly.