If you are planning to export or expand into China, you may already be aware of the importance of registering your existing trade mark before you go. Businesses that go without first registering their trade mark in China often find themselves facing an infringement or squatting problem.
What you may not be aware of is registering your existing English language trade mark in China won’t necessarily prevent third parties from registering a Chinese character version of your trade mark.
Registering your trade mark in Chinese characters
To ensure strong brand protection in the Chinese market, you should consider registering your trade mark in Chinese characters. This is important even where the English and Chinese versions have equivalent translations because the Chinese Trade Marks Office treats them as entirely different trade marks.
The reason for this approach has a lot to do with China being a ‘first to file’ jurisdiction, where the emphasis is on who files the trade mark first rather than who has the greater legitimate right to the brand through actual use. Increasingly, trade mark pirates in China are taking advantage of this loophole to file applications in Chinese characters that mirror well-known English brands.
This practice leaves the legitimate trade mark owner in a position where they are forced to engage in a formal ‘opposition’ procedure through the Chinese Trade Marks Office to prevent the pirated Chinese character trade mark from becoming registered. Utilising the opposition procedure will invariably require considerable evidence that validates the rights of the legitimate owner. Even if an opposition against one pirate is successful, there is every chance that other applications may be made by other would-be pirates.
The entire opposition process will invariably end up costing more than the cost of filing a trade mark application for the Chinese characters in the first place.
|Handpicked related article: Why You Need Overseas Trade Mark Protection|
Which Chinese characters to choose?
So you have decided to file a Chinese character version of your English trade mark in China – but which characters should you use? Most businesses select Chinese characters in one of three ways:
- A literal translation where an English trade mark with a universal meaning is directly translated into Mandarin so that the meaning remains the same, such as Apple and ‘苹果’ (ping guo)
- A transliteration where Chinese characters closest in pronunciation to the English trade mark is chosen, for example Armani would become ‘阿玛尼’ (a ma ni)
- An adaption where the English trade mark is translated into Chinese characters with a practical meaning that reflect its features
As with registering in English, the corresponding Chinese trade mark chosen will need to conform to the normal legal requirements, including the requirements that the Chinese trade mark should:
- Be distinctive
- Not directly indicate the functions and features of the goods or services
- Not be deceptively similar to other earlier registered trade marks