When entering the Chinese market, in addition to registering their Latin trademarks in China, foreign companies must select a corresponding Chinese trademark and register it in a timely manner, in order to connect with Chinese consumers on the one hand and protect their trademark rights fully and comprehensively on the other. The complexities of the Chinese language can make this a challenging task. This article explains how to translate and protect your brand in the Chinese market.
Translating your brand
The most remarkable feature of Chinese characters is that they do not directly indicate a pronunciation, but rather combine shapes and meanings. Each Chinese character can be marked with Mandarin Chinese pronunciation through Chinese pinyin. One Chinese character may have different pronunciations, while different Chinese characters may have the same pronunciation; and many Chinese characters have similar pronunciations but different tones.
When translating a trademark, the corresponding Chinese mark should conform to the requirements of the Trademark Law. Among other things, it should:
- be distinctive;
- not directly indicate the functions and features of the goods or services; and
- not violate the prohibitions set out in the Trademark Law.
From the linguistic perspective, the trademark should follow grammatical rules, have a clear pronunciation and be succinct and easy to remember. From the advertising and marketing perspective, the trademark should be novel, convey a pleasant rather than unpleasant meaning, be attractive to consumers and align with the business features and market orientation.
Foreign trademarks – typically, Latin trademarks – are often translated into Chinese in the following ways.
If a foreign trademark has a practical meaning, the corresponding Chinese characters with the same meaning may be used as the Chinese trademark. For instance, the corresponding Chinese trademark of APPLE is ‘苹果’ (PING GUO); SHELL is ‘壳牌’ (QIAO PAI), and VOLKSWAGEN is ‘大众’(DA ZHONG). However, Chinese trademarks which are directly translated according to their Chinese meaning account for only a small proportion of all trademarks; most foreign trademarks have no practical meaning. Moreover, in certain circumstances, a foreign trademark may have a corresponding Chinese meaning, but the company may opt not to use the literal translation because it lacks a clear pronunciation or for some other reason.
Transliteration is an approach by which the corresponding Chinese characters are selected to form a Chinese trademark that echoes the pronunciation of the foreign trademark. Most Chinese trademarks designed in this way have no specific meanings. For example, the corresponding Chinese trademark of CADILLAC is ‘凯迪拉克’ (KAI DI LA KE), ARMANI is ‘阿玛尼’ (A MA NI), HILTON is ‘希尔顿’ (XI ER DUN), BOEING is ‘波音’ (BO YIN), SONY is ‘索尼”’(SUO NI) and SIEMENS is ‘西门子’ (XI MEN ZI).
Some foreign trademarks have no practical meaning, but are translated into Chinese characters or phrases with a practical meaning that reflects their features; these translations are creative, imaginative and impressive.
For instance, BMW has no practical meaning and is hard to translate into Chinese according to its pronunciation. The corresponding Chinese trademark is ‘宝马’, whose Chinese pinyin is BAO MA, meaning ‘precious horse’. In ancient China, the horse was an important mode of transport. ‘Precious horses’ were rare beasts said to be able to cover 1,000 miles in a single day; there are many ancient Chinese poems in praise of them. These connotations, which reflect Chinese culture and will resonate with Chinese consumers, make the use of this mark for automobiles very appropriate.
Combination of transliteration, literal translation and adaptation
In practice, most Chinese trademarks are selected through a combination of transliteration, literal translation and adaptation.
For instance, the corresponding Chinese trademark of STARBUCKS is ‘星巴克’ (XING BA KE). The first character is the literal translation of ‘star’, and the last two are the transliteration of ‘buck’.
One important feature of the Chinese language is the prevalence of homonyms. Different characters have the same pronunciation and probably dozens of Chinese characters have similar pronunciations, but different tones. Many Chinese trademarks on the market are chosen through a judicious combination of transliteration and adaptation. The most typical example is the COCA-COLA trademark. The corresponding Chinese trademark is ‘可口可乐, whose Chinese pinyin (KE KOU KE LE) is similar to the pronunciation of COCA-COLA and may thus be regarded as a trademark selected through transliteration. However, the individual Chinese characters lend an added dimension to the mark: ‘可口’ means ‘tasty’ or ‘delicious’, while ‘可乐’ means ‘pleasing’. At the same time, the mark KE KOU KE LE as a whole is a fanciful term with no meaning in Chinese and does not directly indicate the functions or features of the goods; thus, it is distinctive as required under the Trademark Law.
Other good examples can be found in the cosmetics sector. The corresponding Chinese trademark of ESTEE LAUDER is ‘雅诗兰黛’ (YA SHI LAN DAI); the corresponding Chinese trademark of CHANEL is ‘香奈儿’ (XIANG NAI ER); and the corresponding Chinese trademark of LANCOME is ‘兰蔻’ (LAN KOU). All of the selected Chinese characters relate to beauty, elegance, poetry, flowers, perfume or similar; all marks are similar to the Latin trademarks in pronunciation; and all are easy to read. Once again, the Chinese trademarks as a whole are fanciful terms with no specific meaning in the dictionary.
The selection of Chinese trademarks is often determined through a combination of transliteration, translation and adaptation, while also factoring in the features of the goods, consumer psychology and market effects. Only through such meticulous translation and design can a trademark be selected that corresponds closely to the foreign trademark and has a clear pronunciation, impressive meaning and high level of consumer recognition.
When selecting Chinese trademarks, it is important to carry out trademark searches for the marks under consideration, to ensure that they do not conflict with the prior rights of others, whether registered or pending registration.
Protecting your brand
A carefully selected Chinese trademark can play an important role in the success of your brand and your business. The Trademark Law enshrines the principle of prior application; where two or more applicants apply to register identical or similar trademarks in respect of the same or similar goods, the Trademark Office will approve for publication the mark with the earliest application date and reject the other trademark applications. Thus, foreign companies would be well advised to select their corresponding Chinese trademarks before entering or upon entering the Chinese market.
The case of the CASTEL trademark is a good example of the importance of a timely application. French Chateau Castel, the largest vintner in Europe, has registered the CASTEL trademark in respect of wine in China, but has not registered the corresponding Chinese trademark. It entered the Chinese market in 1998 and began to sell high volumes of wine marked with the Chinese trademark ‘卡斯特’ (KA SI TE) from 2006. This became one of the most popular wines in China, with annual sales of several hundred million renminbi. However, Li Daozhi, a Spanish natural person, applied to register the Chinese trademark ‘卡斯特’ – which is the transliteration of CASTEL – in respect of wine in 1998. In 2005 French Chateau Castel unsuccessfully applied to cancel this registration based on non-use for three consecutive years. Afterwards, Li Daozhi and Shanghai PANATI Wine Co, Ltd, which was authorised by Li Daozhi to use the trademark ‘卡斯特’, filed suit against French Chateau Castel for infringing their exclusive right to use the registered trademark ‘卡斯特’. In July 2012 the court of final instance ordered French Chateau Castel and its distributors to cease using the trademark ‘卡斯特’ and pay Rmb33.73 million to Li Daozhi and Shanghai PANATI Wine Co.
China has adopted the Nice Classification of Goods and Services. The appropriate classes in which to register the trademark should thus be considered. For instance, for a trademark that is mainly used on garments, protection should be sought not only in Class 25, but also for bags in Class 18, cosmetics in Class 3, eyeglasses in Class 9 and sales services in Class 35. Moreover, the Trademark Office sub-divides the goods and services in each class into different sub-classes, depending on their materials, functions, purpose of use, sales channels and target consumers. Goods and services in different sub-classes are generally deemed dissimilar. For example, shoes and hats are in different sub-classes in Class 25. Therefore, when applying for trademark registration, you should also consider the related goods and services in different sub-classes.
Top tips for protection
In order to effectively protect your brand, attention should be paid to the following points:
- Apply in a timely manner to register the foreign trademark in China, translate your brand into Chinese, design a corresponding Chinese trademark, conduct trademark searches and apply to register the Chinese trademarks in China for the purpose of use and protection.
- Simultaneously apply to register several alternative Chinese trademarks in case one or more of them is rejected.
- When applying for trademark registration, consider all related goods, classes and sub-classes so as to avoid omissions.
- Once used on the market, except for special reasons, the Chinese trademark should not be changed arbitrarily, in order to ensure its stability.
- Retain evidence of use of the trademarks in case of possible non-use cancellations, oppositions, invalidations or infringement cases.
- Conduct trademark watches to identify identical or similar applications and file oppositions or invalidations against them in a timely manner.
Given the features of the Chinese language and the Chinese market, the careful selection and timely registration of Chinese trademarks can ensure the protection of your brand and lay a solid foundation for its marketing, promotion and success in China.
CCPIT PATENT AND TRADEMARK LAW OFFICE
10th Floor, Ocean Plaza
158 Fuxingmennei Street
Tel +86 10 6641 2345
Fax +86 10 6641 5678
Hongyan Wang is the deputy director of the international trademark department. Her practice focuses mainly on trademark prosecution, trademark search and watch services, administrative protection of trademarks, legal opinions on trademark infringement, licensing and other IP-related matters. She is especially experienced in handling oppositions, invalidations, cancellations and administrative legal proceedings, requesting recognition of well-known trademarks, advising on trademarks and establishing IP strategies.