Trademark Use on WeChat Moments

As a popular social platform in China, WeChat Moments, like WhatsApp, Viber, Telegram and Snapchat, is increasingly being used as a commercial sales platform to participate in market activities. However, due to the visibility setting feature of WeChat Moments, it distinguishes itself from ordinary commercial sales platforms. Therefore, when considering whether the sale of goods on WeChat Moments can be recognized as trademark use in the sense of Chinese trademark law, it needs to be analyzed and judged in combination with the characteristics that trademark use behavior should satisfy, such as “public use”.

In trademark non-use cancellation cases for three consecutive years, more and more registrants are submitting evidence such as WeChat Moments screenshots, WeChat chats records, and WeChat transfer information as proof of trademark use. The aforementioned evidence from WeChat Moments belongs to a new form of electronic evidence. Due to its own characteristics, there is currently some controversy over whether evidence from WeChat Moments constitutes public use in the sense of trademark law.

In this article, the author will analyze the principle of public use in the sense of trademark law, briefly discuss the characteristics of WeChat Moments with the support of the specific administrative litigation cases regarding non-use cancellation actions, explore whether WeChat Moments evidence can serve as valid evidence to prove the “public use” of the disputed trademark.

I. Is trademark use on WeChat public use

Article 48 of the Trademark Law starting from the basic function of a trademark, clearly stipulates that “the use of trademarks referred to in this Law means the use of trademarks on goods, packaging or containers of goods, or transaction documents of goods, or the use of trademarks in advertising, exhibition, or other commercial activities for the purpose of identifying the source of goods”. This provision further emphasizes the function and significance of trademarks in commercial activities.

To prove whether the disputed trademark has been used in the sense of trademark law, the registrant must provide relevant evidence to confirm the real, legal, commerical, public and effective commercial use of the trademark on the designated goods or services in the past three consecutive years. Among these principles of use, “public use” is an important one.

“Public use” means that the use of the trademark is not internal use. It should target the relevant public as the identifying group. The trademark should be used in the public commercial field, especially in the commercial circulation field and related areas, so that the relevant public can become aware of the existence of the trademark. Internal use, such as on internal office stationery, signs, office premises identifiers, etc., generally should not be considered public use. Therefore, public use is recognized only when the relevant public, as the identifying group, becomes aware of the trademark's existence and associates it with specific goods or services through this trademark, thereby fulfilling the trademark's function of distinguishing the source of goods and services[1].

II. Characteristics of WeChat Moments

(1) Social Media, Not E-commerce  Platform

WeChat Moments is a social feature within WeChat, a free application providing instant messaging services for smart terminals developed by Tencent. Users can post text, pictures and videos on Moments and share articles or music from other software to Moments. Users can comment on or like contents newly posted by WeChat friends, and other users can only see comments or likes from mutual WeChat friends.

Whether considering the design purpose of this social feature or its daily usage scenarios, it can be observed that for the vast majority of WeChat users, the role of a personal account’s WeChat Moments is more about recording personal life status, sharing personal interests, and promoting feelings among friends, rather than serving as a platform for commercial sales and promotion.

(2) Non-public Nature Which Is Only Accessible to WeChat Friends

Furthermore, to enrich the social functions of WeChat Moments, Tencent has implemented settings for the public range of WeChat Moments. Both WeChat and WeCom accounts can set the range allowed for friends to view their Moments, thereby categorizing their posted content as “Public (visible to all contacts)”, “Private (visible just to me)”, and “Share With Select Friends” or “Don’t Share With Selected Friends” based on tags and names. Therefore, theoretically, content posted in WeChat Moments possesses an enclosure visible only to specific contacts, lacking the openness characteristic of commercial activities like advertising, roadshows, and commercial sales, which target the general public.

(3) Modifiability of WeChat ID

As a new form of electronic data evidence, WeChat Moments shares characteristics like virtuality and mutability with other electronic data evidence. Regarding WeChat IDs that serve as identifiers of the source of WeChat, according to the regulations in the “Tencent WeChat Software License and Service Agreement” [2]by the official WeChat, WeChat users’ IDs are modifiable and do not necessarily have a unique and exclusive corresponding relationship with real WeChat users. Therefore, the relationship between the real WeChat user and the WeChat ID reflected in their evidence materials is not necessarily linked, lacking the reliability and uniqueness of traditional types of evidence.

III. Preliminary Analysis of Whether WeChat Moments Constitutes Public Use in the Sense of Trademark Law Combined with Case Studies

Given the unique social, closed, and modifiable characteristics of WeChat Moments, judicial practice tends to hold that WeChat Moments evidence does not satisfy the requirement of public use in the sense of trademark law.

In the administrative litigation case for the review on non-use cancellation against the trademark registration “鹿圣 (Deer Saint in Chinese)”, the examiners of the CNIPA stated in the review decision that the WeChat Moments screenshots and WeChat transaction chat records provided by the registrant were not notarized. Based solely on the evidence in the case, it was insufficient to prove that the registrant had effectively used the disputed trademark on the designated goods during the specified period, thus canceling the registration of the disputed trademark.

Subsequently, the trademark registrant filed administrative lawsuits and applications for retrial with the Beijing Intellectual Property Court, the Beijing High People’s Court, and the Supreme People’s Court, having notarized the WeChat Moments and WeChat chat records submitted during the review stage. The Beijing Intellectual Property Court, after trial, held that “although its customization, packaging, sales, and promotional activities were mainly limited to the plaintiff’s own and related transaction parties’ friend circles, with a small scale and amount, it was sufficient to prove that during the specified period, the plaintiff had objective acts of using the disputed trademark on white spirit goods and subjective intention, which could be regarded as the use of the disputed trademark on Soju” and ruled to revoke the review decision made by the CNIPA.

The author believes that even if the WeChat Moments submitted by the registrant undergo notarization procedures, proving their authenticity, they still cannot satisfy the requirement of “public use” in the sense of trademark law. Firstly, the notarization procedure submitted by the registrant is evidence preservation notarization. The effectiveness of this type of notarization is limited to itself and is not necessarily related to the facts to be proven. Therefore, the notarization of WeChat Moments screenshots by the registrant does not necessarily prove the public use of the disputed trademark. Secondly, the number of likes and comments shown on the WeChat Moments screenshots submitted by the registrant are mostly in single digits, involving very few people. Moreover, according to the WeChat chat records submitted by the registrant, the buyer was actually a friend with whom they could exchange information about their children’s university admission, rather than consumer groups targeted in the market circulation field. Due to its inherent closed characteristics, WeChat Moments cannot satisfy the requirement for “public use” in the sense of trademark law in non-use cancellation cases. This fact was further confirmed and proven in the second-instance judgment and retrial ruling issued by the Beijing High People’s Court and the Supreme People’s Court regarding this case.

Dissatisfied with the first-instance judgment, the applicant of the review on non-use cancellation action appealed to the Beijing High People’s Court. After trial, the Beijing High People’s Court held that although the registrant had conducted notarization of the photos posted on the WeChat, the scope of the target viewers of the WeChat Moments screenshot was not the unspecified market consumer group. Therefore, the aforementioned WeChat Moments content did not constitute promotional use of the disputed trademark in the sense of trademark law. Consequently, it issued a final judgment revoking the first-instance judgment, and the disputed trademark was canceled[3].

After obtaining the second-instance judgment, the trademark registrant submitted an application for retrial before the Supreme People’s Court. After trial, the Supreme Court held that although the notarized documents submitted by the registrant showed that they had posted Soju bearing the disputed trademark to WeChat Moments during the specified period, it was still insufficient to prove that this constituted promotional use of the disputed trademark in the sense of trademark law[4].

Furthermore, the author searched the IPhouse database using “WeChat Moments” as a keyword and found that from 2021 to 2023, there were 87 administrative litigation cases for trademark cancellation review that concluded through second instance, where the submitted evidence included “WeChat Moments” screenshots. Among these 87 administrative litigation cases, 24 required considering “WeChat Moments” screenshots. Among these 24 cases, 18 held that the disputed trademark had not been publicly used on the approved goods or services during the specified period, failing to satisfy the principle of public use in the sense of trademark law, for reasons such as “WeChat Moments has a closed nature, involves few people, and the target viewers is not the unspecified market consumer group”. For example:

In the non-use cancellation action against trademark registration “No.9 Warehouse (9号仓库 in English)”[5], the Beijing High People’s Court held that WeChat and WeChat Moments have a closed nature and involve few people, and the content shown in the evidence mostly pertained to the “No.9 Warehouse Imported Wine Direct Sales Website”, which was insufficient to prove that the disputed trademark had been used in the sense of trademark law on all the approved goods such as “wine” during the specified period.

In the non-use cancellation action against trademark registration “Three Precious Masters Huang (仨宝黄师傅 in Chinese)”[6], the Beijing High People’s Court held that although the WeChat screenshots and the declaration promoting and selling the disputed trademark product on WeChat Moments could prove that the registrant’s affiliated entity had promoted the relevant goods through its WeChat Moments, the viewers of WeChat Moments is relatively small and relatively fixed. Posting pictures of goods using the disputed trademark in WeChat Moments, without supporting evidence from other sources, should not be considered commercial use of the disputed trademark.

In the non-use cancellation action against trademark registration “Qing She Zeng & Logo (慶畬增及图 in Chinese)”[7], the Beijing High People’s Court held that although some product pictures posted on WeChat Moments displayed the disputed trademark, WeChat and WeChat Moments have a closed nature and involve few people. Therefore, these WeChat Moments screenshots could not constitute use in the sense of trademark law.

In summary, although WeChat Moments screenshots are increasingly appearing as evidence in non-use cancellation cases due to their ease of preservation and collection, because of the inherent closed nature (only visible to contacts) stemming from the social nature of WeChat Moments itself, and the uncertainty due to the modifiability of WeChat IDs, even the notarized WeChat Moments screenshot evidence cannot satisfy the principle that the disputed trademark needs public use, as the viewers it faces is not the unspecified market consumer group. Therefore, the author believes that, in the absence of other evidence of actual performance and implementation, WeChat Moments screenshot, filed as evidence of use, should not be recognized as valid.

IV. Whether Use on Other Carriers within the WeChat Ecosystem Constitutes Public Use in the Sense of Trademark Law

With the explosive growth of private domain, the WeChat ecosystem has gathered a massive amount of network traffic, and entrepreneurs naturally will not miss such an excellent marketing channel. Following the discussion on whether WeChat Moments evidence constitutes public use in the sense of trademark law, the author continues to explore whether relevant evidence on other important carriers within the WeChat ecosystem, namely, WeChat Official Accounts, WeChat Mini Programs, and WeChat Channels, constitutes public use in the sense of trademark law.

The life of a trademark lies in its use. Article 48 of Chinese Trademark Law clearly defines the use of a trademark, “the use of trademarks referred to in this Law means the use of trademarks on goods, packaging or containers of goods, or transaction documents of goods, or the use of trademarks in advertising, exhibition, or other commercial activities for the purpose of identifying the source of goods”. This definition forms the fundamental legal basis for the following discussion on “public use” in the sense of trademark law. The term “commercial activities” in this article emphasizes the public nature of the use behavior, as opposed to personal, internal, or non-profit use.

(1) WeChat Official Accounts

WeChat Official Accounts, especially Service Accounts and Subscription Accounts, have the core function of pushing content and disseminating brands to unspecified user groups. Once an Official Account article is published, it becomes accessible to any WeChat user via search, sharing, or direct access. This mode of communication breaks the limitations of specific interpersonal relationships and possesses the essential characteristics of being directed towards “the public” in general. In terms of legal theory, the nature of publicity of WeChat Official Accounts is similar to that of the traditional media, such as newspapers, magazines, and television advertisements. It is a form of communication that is open to the public at large and non-directional. Therefore, after securing all necessary evidence, the author believes that promotional evidence of a trademark registration within WeChat Official Accounts can preliminarily satisfy the requirement of “public use” in the sense of trademark law.

(2) WeChat Mini Programs

WeChat Mini Programs, especially E-commerce Mini Programs, are essentially fully functional online transaction platforms embedded within WeChat. Their design purpose is to provide goods or services to unspecified consumers and conduct transactions. Therefore, the nature of publicity of WeChat Mini Programs is more direct and obvious than that of Official Accounts. They are not only for advertising but also the very location where transaction behaviors occur. Therefore, after securing all necessary evidence, the author believes that evidence of trademark promotion and sales within WeChat Mini Programs can preliminarily satisfy the requirement of “public use” in the sense of trademark law.

(3) WeChat Channels

As the latest carrier in the WeChat ecosystem, Tencent officially started the internal test of WeChat Channels in January, 2020, and fully opened it in June 2020. Due to its dual distribution mechanism combining social and algorithmic elements, the author believes that WeChat Channels exist in both public and private states. The nature of publicity of the WeChat Channels is reflected in the fact that content can enter the public domain traffic pool through algorithm recommendations, be viewed by non-friend users, and can be retrieved via WeChat Search, possessing public media attributes. Simultaneously, the close nature is manifested by the strong reliance of content dissemination on social relationship chains, and the publisher can set the viewers strictly within their private social circle through settings like “Only Friends and Followers (and strangers following requires the publisher’s approval)” or “Only Followers (and following requires the publisher’s approval)”. Therefore, for evidence from WeChat Channels in this mode, due to the publisher’s settings, the dissemination range of their content is limited to a fixed circle of WeChat contacts with a certain level of understanding and trust, facing a specific and limited user group, making it difficult to satisfy the requirement for “public use” in the sense of trademark law. Moreover, the publisher of a WeChat Channel can change the public/private status of their videos at any time, and this state change is difficult to be fixed as evidence. Therefore, the author believes that, in the absence of other evidence with stronger probative value, WeChat Channel evidence alone cannot serve as evidence to determine that the trademark registration has been used in the sense of trademark law.

In summary, determining the public use of a trademark on carriers within the WeChat ecosystem is a process that starts from legal principles and conducts specific analysis based on platform characteristics. Even though the WeChat platform has technical publicity (e.g., Official Accounts can be searched by anyone), the author believes that this kind of publicity is more a matter of form than substance. The discussion in trademark non-use cancellation cases regarding whether it constitutes public use in the sense of trademark law focuses more on whether there is “substantive publicity”, namely, whether the use behavior actually faces the unspecified market consumers related to the goods or services. If a WeChat Official Account, a WeChat Mini Program, or a WeChat Channel has a small number of followers and minimal interactive data, the extent of its “substantive public use” should be reasonably questioned. In the absence of support from other kinds of evidence, the use on the aforementioned WeChat ecosystem carriers cannot alone serve as sufficient evidence to determine trademark use, especially “public use” in the sense of trademark law.