A Chinese language China trademark is really important. This was emphasised by the recent New Balance case. In addition to the award of damages amounting to RMB 98 million (approximately USD 16 million), a New Balance affiliate was ordered to publicly apologise to the Chinese plaintiff and to refrain from using the infringing China trademark on its products. An embarrassing and costly result for New Balance, and presumably its advisers.
Importance of a Chinese language China trademark
One of the more interesting aspects of the New Balancde case is that it was about the infringement of a Chinese language China trademark. Many foreign companies have paid too little attention to the Chinese language version of their China trademark, and the Chinese language trademarks of others.
There are many reasons for this, one of them possibly being the use of offshore China trademark agents that lack sufficient direct understanding of the China trademark regime. Another is the lack of understanding of the China business environment and the importance of a Chinese language China trademark. Finally, China trademark agents operate in a very competitive, price driven market. As with many things in China, low prices often equate with service and advice to match.
Every foreign company should protect its foreign trademark by registering it as a China trademark in China. It should not stop there however. In China every product and service becomes known and identified in the Chinese language. It is good practice for the foreign company to control this process by registering a Chinese language China trademark for use in China.
Meaning and sound of a Chinese language China trademark
To date, most Chinese language renditions of foreign trade marks have followed one of two paths:
- the Chinese language China trademark is translated phonetically to sound as much like the foreign trademark as possible. This can result in a China trademark that is meaningless to the reader, or at worst, sends the wrong message about the product or service.
- the Chinese language China trademark is translated by meaning – an attempt is made to convey the “message” of the product and service in Chinese, even if it sounds totally different from the foreign trademark.
Sometimes a hybrid path is chosen. For example the offending use in the new balance case was 新百倫 pronounced “Xin Bai Lun.” “Xin” means “New” in Chinese and “Bai Lun” is a phonetic translation of “Balance.”
The best, but less used path is to spend the time and effort to choose Chinese characters that sound like the foreign language China trademark and have a good meaning in Chinese. To be done successfully this requires an understanding of the underlying “message” of the product and a detailed knowledge of Chinese language. Skills that are not readily available at the “bargain” prices that are often sought after by foreign trademark agents and their clients.
“Use” not necessary to register a China trademark
“Use” of a trademark is not required to register a China trademark. China has a “first to file” trademark regime and it would be prudent for any foreign business to consider immediately registering their foreign trademark as a China trademark. At the same time they should spend the time, money and effort to choose Chinese characters that convey the appropriate brand message and also register that as a Chinese language China trademark.
China is a huge market for many foreign goods and services but without protecting the brand and its image by registering a suitable China trademark that market may be closed to you. If someone else, including your China distributor or agent, controls your Chinese language China trademark, they control your China business.
A good Chinese language China trademark is a real asset
A good Chinese language China trademark is a real asset to a business and it is worth spending the effort to get this now. The opportunity may not be there in the future.
Take away points:
- Now is the time to register your trademark as a China trademark.
- All products and services end up by being known by a Chinese language name in China – best to register your Chinese language China trademark too.
- Ideally your Chinese language China trademark should sound like the original and have a good meaning in Chinese. It is worth taking the time, money and effort to achieve this.
- It is important to act promptly – if you do not register your China trademarks, someone else is likely to and then you will not be able to use your trademark in China.
© 2015 Graham Brown and Wei Xin. All rights reserved.