The use and registration of Chinese-language trademarks is an essential part of any marketing activity in Greater China. Chinese consumers – particularly in the PRC (aka “mainland China”) – will almost always use the Chinese version of a foreign mark in oral communications. Even if, for example, a foreign language trademark is being used exclusively by a foreign brand owner on its store signage in China, this does not mean that local consumers are referring to that foreign language mark in conversation. Marketing managers of foreign companies are often unaware of this and mistakenly believe that the foreign language mark will provide adequate protection.
The failure to introduce a Chinese-language version often results in a range of negative consequences. Most common – and most serious – is the phenomenon of piracy at the register, i.e., where a registry pirate registers in its own name the Chinese counterpart used by Chinese consumers to refer to a foreign brand. Such piracy often results in expensive disputes and litigation, very often only resolved through a purchase of the pirated mark for a hefty sum by the legitimate trademark owner. Other common scenarios include the invention of Chinese brands by local distributors, sometimes using characters that are inappropriate or that infringe the rights of third parties.
In other cases, different Chinese brands are introduced by local distributors in the four main Chinese-speaking markets – PRC, Taiwan, Hong Kong and Macau – without the knowledge of the brand owner, thereby leading to confusion in the market, and later requiring expensive “clean-up” exercises, as the brand owner attempts to unify the Chinese brands into a single brand.
The Chinese Language
When one speaks about the “Chinese language” it is important to understand that there are numerous oral dialects commonly used throughout China. The official dialect in the PRC and Taiwan is referred to as “Putonghua”, “Mandarin” or “Guoyu”, meaning “the national language”. Mandarin Chinese is based on the Beijing dialect and is spoken, with varying degrees of fluency, by approximately 95% of the population. Cantonese is another major dialect, spoken predominantly in Hong Kong and southern China, which is so different from Mandarin that a native speaker of one may not be able to fully understand the other.
While oral dialects differ, they are united by a common written language. No matter how they are pronounced, each Chinese character or ideograph conveys a distinct meaning. However, the characters used in the PRC are rendered in a so-called “simplified” version, while those used in Taiwan, Hong Kong and Macau are in the “traditional” or “complex” format. While most educated Chinese can read both styles of characters, the general practice is to file the simplified version of the character in the PRC and in traditional characters in Taiwan, Hong Kong and Macau.
Oral Chinese is rich in homonyms, i.e., Chinese characters that are different from each other in terms of appearance and meaning but nevertheless share the same pronunciation. For example, one standard dictionary lists approximately 80 characters that are pronounced as “li“. The wealth of homonyms in Chinese can be useful when considering options for developing a Chinese version of a foreign-language trademark, as there are usually multiple characters that will produce the same sound. It does also mean, however, that the clearance process can be complicated as a trademark search will often reveal multiple prior marks that share a similar pronunciation to the searched mark.
Creating a Chinese-language Trademark
When a trademark owner is considering the options for creating and registering Chinese versions of foreign-language marks, the following questions should be considered:
- Does a Chinese version already exist in the relevant markets (PRC, Taiwan, Hong Kong, Macau, Singapore, etc.)?
- Are the Chinese versions used in these places the same? NB: For these purposes, simplified and complex characters are fundamentally the same.
- If one or more Chinese versions already exist in the market, who introduced them – consumers, distributors, the brand owner’s own employees?
- How long have Chinese versions been used in the market, and would it be difficult to replace them with new and different versions?
- Have Chinese marks already been registered in the relevant jurisdictions within Greater China? (Trademark searches are usually necessary to confirm this.)
- Are candidate Chinese marks suitable in all regions of Greater China from a cultural, marketing and corporate image perspective?
- Has the brand owner’s trade name/company name already been translated into Chinese, and if so, has the primary trade name been cleared for use as a trademark?
- Assuming a new Chinese trademark needs to be developed, should the new mark be a translation or transliteration of the foreign-language mark?
Brand owners should first do a bit of homework before mapping out a strategy for handling Chinese marks.
A good place to start is with local agents and distributors. They will normally be willing and able to tell the brand owner whether they have been referring to its mark by a Chinese counterpart or if such counterpart has evolved independently in the market over the years. If they cannot provide satisfactory answers, it may be necessary to conduct independent investigations through local advisers. Where the good faith of an agent is in question, it may preferable to send investigators to conduct undercover inquiries into the agent’s use of Chinese marks.
If a Chinese mark is already being used in the market, trademark advisers should first evaluate the suitability of the mark, as well as its availability for use. Likewise, suitability and availability should be verified with respect to any Chinese marks newly developed by the brand owner’s staff, agents, advertising agencies or other advisers, including trademark lawyers.
Serious problems with proposed Chinese marks will very often be imperceptible to people who are not familiar with the linguistic and cultural terrain. For example, “555” is a highly successful trademark for cigarettes in China, but the mark “444” would be deemed toxic from a marketing perspective, as the number “4” is pronounced “si” in Mandarin, and a homonym character means “death”. Prevailing superstitions in Chinese culture have deep roots in language, and the combination of three 4’s together in a single trademark would immediately evoke laughter, fear or ridicule among Chinese consumers – much in the way the Japanese beverage brand “POCARI SWEAT” creates amusement among Westerners.
Brand owners generally prefer to develop Chinese-language trademarks that are “transliterations” of the foreign-language marks, i.e., Chinese marks that aurally approximate the sound of the foreign mark. However, it is sometimes difficult to develop transliterations of foreign words due to conflicts at the register or linguistic limitations. In the case of a foreign trademark that has inherent meaning, it may make more sense to develop a Chinese mark that is a direct literal translation of the foreign mark and/or the logo that accompanies the foreign mark. For example, “APPLE” renders itself easily and gracefully into “苹果” (pronounced ping guo, meaning “apple”). When a trademark is a coined word but consists of distinct elements with inherent meaning, it is still possible to go down the conceptual route in Chinese. For example, “Microsoft” becomes the distinctive “微软” (wei ruan–wei meaning “micro” and ruan meaning “soft”).
What Should Be Registered?
Where a mark has a widely-used counterpart in the Chinese language, it is generally prudent to file applications to register the Chinese version in a wider range of classes than one might in other countries, and covering a wider range of goods and services in each class. Doing so can pay dividends in terms of reducing opportunities for pirates to exploit gaps in coverage.
The risk of non-use cancellations against trademark registrations that are not used for the goods or services covered is real. Like other countries, the Trademark Law in China allows marks to be cancelled where they have not been used for a continuous period of three years post-registration. If there is reason to believe the risk thereof is significant, consideration can simply be given to refiling for the mark every three or four years.
Enforcement of Chinese Trademarks
Seeking remedies for infringement of Chinese-language trademarks based on registrations of foreign-language marks is typically difficult in the PRC. This is particularly true with respect to online enforcement, as trade platforms in China will typically refuse to take down infringing ads where the only brand in use is an unregistered Chinese-language mark.
Beyond online enforcement, consideration can of course be given to seeking protection against unauthorized use of Chinese language brands based on a registration of an English-language mark. But experience suggests that courts and other authorities will only offer such protection in narrow circumstances.
To illustrate, assuming the brand owner has a registration for “KLIV”, but an infringer uses a Chinese transliteration with a similar pronunciation, e.g., “ke li fu”, relevant authorities would almost certainly refuse to confirm that an infringement has taken place.
Pirates in China will quite often notice the absence of a Chinese version of a new and reputable foreign brand, and they will take advantage of this by creating and filing for Chinese-language equivalents. In extreme cases, they will also commence use of such pirated names, thus making enforcement more complicated.
Naturally, foreign owners of marks that are deemed “well-known” can argue that they are eligible for special protection under relevant provisions of the PRC Trademark Law. However, making a case under these provisions requires extensive evidence to prove the mark enjoys an extremely high degree of reputation within mainland China. In this regard, evidence of fame in Hong Kong, Taiwan or elsewhere beyond mainland China will typically be given little or no weight.
For these and other reasons, protection is best achieved by registering all Chinese-language versions of famous foreign marks, covering a wide range of goods and services.
Although English-language brands remain of critical importance, Chinese brands remain an important tool for marketing in Greater China, and trademark owners are advised to focus early on both devising and registering Chinese brands across the region.