Vivien Chan & Co - China
With the number of mobile apps on the rise, designing a unique and striking app name and icon is crucial for developers to set their innovations apart from others’ in the marketplace. A strong name can give an app a competitive edge. Further, registering this name as a trademark can be central to its continued success as it gains influence.
Registering app names as trademarks
Proactively registering an app name as a trademark in the relevant countries prevents other traders from free riding on the app’s success. While listing platforms do not generally check for conflicting names before approving an app, having a trademark registration is a powerful tool in proving prior rights if others copy its name.
What to register for?
An app usually has more than one indicator of origin. The name is often relatively descriptive so that the app appears when users search for a specific function. Accordingly, many apps have a:
- relatively short and descriptive name;
- full name; and
- logo that displays on a phone.
App developers are encouraged to register all forms of their marks for full protection in case free riders copy one form of the trademark only (eg, the logo but not the name). Many full names of apps contain a slogan. However, these are difficult to register in China.
Which goods/services to register for?
The goods and services associated with mobile apps fall into multiple classes. In general, trademarks that are used for downloadable or app software should be registered in Class 9. It is also common to apply for registration under Class 42, which covers “development of computer software”. More and more cases suggest that app developers should register the exact nature and function of the services provided, as apps are increasingly seen as a way to provide multiple services, instead of a single type of service. For instance, instant messaging apps are protected under Class 38, which covers “electronic exchange of voice, data, audio, video, text and graphics accessible via computer and telecommunications networks”. Apps facilitating ride sharing are protected under Class 39, apps on financial information are protected under Class 36 and reading apps such as Kindle are covered by “publication of electronic books, newspapers, magazines, journals and blogs” under Class 41. Only with the correct coverage would the court protect an app name from infringement.
When to register?
As many app names are relatively simple and descriptive, if one app developer selects and uses a name, other app owners could be left with very few choices. Also, there is a risk of having a name become generic through use.
Hard work and potential revenue will be protected by filing a trademark application as early as possible in the development process and enforcing against copycats.
Enforcing trademark rights
One way to protect an app name from infringement is to collaborate with app distribution platforms. Platforms such as Google Play, Xiaomi App Store and Baidu operate an online complaint system, which allows app developers to report and take down infringing activities. While the procedures for each app platform differ, having a trademark registration in the jurisdiction is a prerequisite.
It is also paramount to obtain notarised evidence of the alleged infringement. This includes notarised screenshots of the infringing apps’ pages and proof of ownership. Since the Chinese administrative authorities and IP courts usually accept notarised and translated (if the evidence is in foreign language) evidence only, these documents must be in place if the matter is to be taken further.
App developers should be mindful of protecting their innovation when entering the Chinese market. Registering an app name as a trademark is a good way to extend the reach of the brand and preventing copycats from piggybacking on the app’s success.