Naming the dragon: Protecting Chinese character trade marks

The article Taming the dragon: Trade mark protection in China summarised the reasons for seeking registration in China earlier rather than later, and steps for obtaining effective trade mark protection to meet the challenges of Chinese law and practice.

Why register a Chinese character version of a trade mark?

Protecting English language trade marks in China is relatively straightforward for western companies, however protecting Chinese character marks is becoming increasingly important. Why? Because Chinese consumers generally refer to foreign brands by reference to Chinese versions of the brand name. Where there is no official Chinese version created and promoted by the foreign company, it is likely that the local Chinese market will create a Chinese version. The risk this creates for foreign companies is that they may not like the Chinese version and someone else might register it. The following examples illustrate the issue:

Hermès is a popular brand in China. The Chinese consumers call the product Ai Ma Shi. In 1995, a Chinese company registered Chinese characters for Ai Ma Shi "爱玛仕" while the Chinese character trade mark used by the French company is "爱马仕". These characters have the same pronunciation, and are visually very similar. Hermès has spent many years trying to acquire this registration but the Chinese courts have consistently ruled against Hermès and did so again in February this year.

Similarly, Chinese consumers created a Chinese version of the brand VIAGRA ("伟哥" or "big brother") and a Chinese company registered the Chinese character trade mark for this name. Pfizer has spent eleven years trying to preserve its rights in the Chinese name for VIAGRA but has not been successful.

China now has the largest number of trade mark registrations in the world and over a million trade mark applications are submitted every year with the effect that the trade mark registration process in China is quite slow. Receiving a rejection is common for both English language and Chinese character trade marks and failure to secure registration can hinder entry into the Chinese market. In addition the Chinese language itself presents difficulties. Although there are about 40,000 Chinese Mandarin characters, only 2,500 are commonly used and recognised. Creating a Chinese character trade mark with positive connotations, reflecting the meaning of the English language trade mark and the image of the company can be quite difficult. Given the growth of filings in China over the last few years it means that there are less available marks particularly when the trade mark is a dictionary word rather than an invented word.

What to register?

It goes without saying that at the earliest opportunity a company should register its English language trade mark. Stopping the process there is risky in light of the practice of Chinese counterfeiters to register either the company's official or unofficial Chinese language trade mark. The recommendation is to register the English and the Chinese characters (Mandarin) of the trade mark, and some companies seek to also register the transliteration or phonetic version of their English language, for example as well as a Cantonese version.

For example, Coca-Cola translated its brand into the Chinese name Ke Kou Ke Le and then found Chinese characters that approximated that transliteration as 可 Ke (approved) 口 Kou (mouth) 可 Ke (approved) and 乐 Le (joy). That is, the first two characters 可口 "approved mouth", together mean the word "tasty", and the combination of the four Chinese Mandarin characters, closely approximate the Chinese pronunciation of Coca-Cola and convey a very positive meaning of "tasty is joy".

Why develop a Chinese character name for your company name and address?

Applications being filed in China must be filed in Chinese. This means that at the time of filing, a company's name and address is translated into Chinese. Where a company does not have an official Chinese language name and address, the Chinese associate filing the application will generally translate the name and address. The recommendation is for the company itself to choose the translation it wants, and to consistently use it.

The take home message

To get the broadest possible protection, consider securing registration of your trade mark, not only in English language characters, but also in Chinese Mandarin characters. At the same time, consider developing and consistently using a Chinese version of your company name and address, for use on official documents. Trade mark attorneys can assist you with this process, however if you have access to Mandarin speakers working within or in association with your company, consider utilising their services to help develop appropriate Chinese character trade marks and company name, which are more finely tuned to your corporate brand and image.

If you would like any further information on this subject, please do not hesitate to contact Joanne Martin, or members of the trade marks team.