By: John Tan
Many foreign businesses are reluctant to register their brand name into Chinese, assuming that the brand will be recognizable, distinctive, and protected by one trademark filing. In reality, it is critical to ensure that the trademark name is also registered in Chinese.
To begin with, it is important to understand that if the trademark is registered only in its original version i.e. Latin characters and pronunciation, protection is not granted to its Chinese equivalent. This means that virtually anybody can use the same or similar trademark, and register it using a combination of Chinese characters. In that scenario, the China Patent & Trademark Office (CTMO) would then most likely prevent you from registering your Chinese name later on. This is precisely what happened to the well-known French fashion brand Hermès who tried to register (a bit too late) its trademark in Chinese as 爱玛仕 but was prevented by the CTO from doing so as it was deemed similar to an already existing Chinese brand (爱马仕) on the basis that it could be misleading to Chinese consumers.
Following Hermès’ and other foreign brands’ misfortunes, it is important to remember that China is a “first to file” country. This means the legal protection is only granted to the first trademark to be filed to the CTMO. In this spirit, a trademark application can be declined solely on the basis that the brand is not the first to file a Chinese version and that it cannot demonstrate that it has become well-known in China prior to the rogue registration, despite having a pre-existing English-language registration in China. If the same or similar trademark is already registered in Chinese – it is practically impossible to successfully register another trademark with the same name, regardless of how recognizable and famous it is abroad.
Protecting the commercial value of your brand
In addition to the legal benefits of adding an extra layer of protection to your brand by registering it in Chinese, there are also numerous commercial benefits to it. More often than not, local consumers are simply not used to foreign brand names. Many are even unable to read and/or pronounce it correctly. In all likelihood, a Chinese equivalent to the original name will be adopted by consumers themselves, which may lead to misconception and misrepresentation of the actual brand name and image. One of the most famous illustration might be the American food conglomerate brand Quaker Oatmeals. The brand neglected the need to create a Chinese trademark upon entering the market, to later find out that the public began to call it “the old man brand” or ‘lao ren pai’ (老人牌). Needless to say, such interpretations can damage the reputation of your business and the products/services affiliated to it. By translating the name and adapting a correct Chinese version of it, you remain in control and thus ensure that your business has a positive and correct brand perception in the market.
Some tips on registering your trademark in Chinese
Timing: we always advise our clients to file the trademark application in Chinese as early as possible. As detailed earlier, China operates on first-come-first-served basis and the more you wait, the bigger the risk of someone else registering your mark grows. You should also bear in mind that the filing process can take up to 18 months and that the trademark is only protected after the registration process is fully processed and approved.
Filing strategy: is another important step to consider. The trademark registration process in China comprises both a formal and a substantive examination. The formal requirements are generally easily met, however the substantive requirements tend to be more comprehensive and failure to meet these standards often results to refusal. Most importantly, if you are starting your business, you need to make sure that the adopted Chinese name is distinctive enough. In accordance with Article 11(2) of the PRC Trademark Law the signs submitted under the preceding paragraph may be registered as trademarks when they have acquired distinctive features through use and have become readily identifiable. An example of this is the successful registration of “支付宝 (known as Alipay)”. As you may know, 支付宝 is a third-party payment platform. Strictly speaking, “支付” has the meaning of “payment” which because of its generality shall not be trademarked – but because it met the distinctiveness test, it was able to pass muster.
Making sure that the translation/s are appropriate: This is also very important, especially if your trademark consists of figures, Chinese words and/or English words. In China, everything from the sound to the tone and even the look of the chosen Chinese characters have to be taken into consideration. Thus, for instance, a brand known all over the world like Coca-Cola, if translated phonetically to Chinese would sound like an absurd combination of words such as “bite the wax tadpole” (Kēdǒu kěn là/ 蝌蚪啃蜡) or “female horse stuffed with wax” (骒马口蠟). The Chinese language has unique characteristics, and therefore while developing the equivalent trademark in Chinese, it should be carefully examined by native translators as well as marketing experts.
Registering several versions of the trademark name: some of the most successful trademarks in China, have actually as many as three degrees of protection. Thus it is advisable to register: 1) the original western brand name; 2) a sound-alike version but with a Chinese character and 3) a definition of what the brand name means in mandarin, including the form, the sound and the meaning.
By registering your trademark in Chinese, as well as its native version, your brand identity will be the most protected from any kind of infringements. Doing so early on can save you from any potential legal disputes if someone else decides to use your brand name in Chinese. Finally, it is important to make sure that all of the possible translations are considered in order to avoid any misconceptions.
About IPO Pang Xingpu :
IPO Pang Xingpu is a premier international law firm that has been representing clients in China since the early 1990s. We’ve been here longer than the vast majority of corporate law firms, and have helped hundreds of companies across a wide spectrum of industries securely and quickly establish operations in China, and then provide follow-on services for their ongoing legal needs.
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