New Zealand: Developing a Chinese script trade mark – considerations and mistakes to avoid

Last Updated: 21 July 2011
Article by David Macaskill

China and its protectorate states Hong Kong and Macau are increasingly important markets for New Zealand business.

The recent free trade agreement between New Zealand and China has drastically improved access for New Zealand businesses to the Chinese market. In addition, Chinese consumers' hunger for quality products and safe food is increasing the demand for New Zealand's exports.

Developing a Chinese script trade mark is an important part of doing business in China and other Asian countries. The following is a brief discussion of points to consider and mistakes to avoid.

Consider where you will use the trade mark

Cantonese and Mandarin are dialects of the Chinese language. They share the same base alphabet, being represented through identical symbols. However, Cantonese and Mandarin differ as spoken languages and are not interchangeable. Different regions speak either Cantonese or Mandarin.

Mandarin is the official language of China and is spoken throughout most of that country. In contrast, Cantonese is spoken in Hong Kong, Macau, and Guangdong Province. Mandarin is gradually gaining the upper hand.

Therefore it is important to consider where you will use the trade mark.

You can then address the translation and phonetic issues appropriate to your customers' dialect (as discussed below).

Which symbols to choose

Meaning of symbols

A trade mark is generally formed from a combination of symbols. Most businesses have an existing trade mark and want to convert that mark into a Chinese script. Some businesses are developing a new mark specifically for a Chinese speaking market. Either way, the important issue is deciding on which symbols to chose.

There is an unlimited combination of symbols in the Chinese alphabet for use in translating an English language mark into Chinese script.

Each symbol in the Chinese alphabet has an intrinsic meaning. The meanings of the symbols in your trade mark will be your customers' first impression of your business. Therefore, the symbols you choose need to convey the core aspects of your business.

However, to function as a trade mark the symbols must distinguish you from your competitors.

For example, if you choose a trade mark for a health supplement, being the characters for tasty, beautiful appearance, and long life, then you are very likely to end up with a problem. Words of this type are likely to already be in use by various existing Chinese herbal remedy manufacturers. Regardless, of infringement problems, it would be very difficult to stop a competitor using a very similar combination as your mark is effectively a description of what your product achieves.

Therefore, although you may want your trade mark to relate to the desirable features of your product, choosing characters which are commonly used in your field will stop you from being able to distinguish your products from your competitors.

Pronunciation of your trade mark - Transliteration

Your Chinese script trade mark will determine how people pronounce your trade mark. Accordingly, the pronunciation of the symbols in the trade mark should be considered. This is referred to as transliteration. For example the transliteration of the symbols forming the mark 顧得怀 is GU DE HUAI.

It can be important for there to be phonetic similarities between the English version and the Chinese version of a trade mark. This allows you to have consistency in pronunciation across several markets.

In addition, it is important that the mark can be easily pronounced by your customers. Therefore feedback from both a native Mandarin and a Cantonese speaker is important to help identify any issues.

The sheer number of Chinese script symbols also affects pronunciation as you can achieve a desired sound through a whole range of appropriately chosen symbols.

Therefore, selecting symbols to form your Chinese script trade mark involves balancing several different considerations.

Clearance searches should be completed first to avoid infringement

It is important to ensure that a Chinese script trade mark is available for use. Accordingly, clearance searches need to be selected of the trade mark registers in the countries in which you will use your trade mark.

There is no one trade mark register which covers all Chinese speaking countries. Hong Kong is a Chinese protectorate but it maintains its own trade mark register. Taiwan also maintains its own trade mark register. Accordingly, separate searches may need to be completed of several different trade mark registers.

Each search should be designed to disclose registrations or prior applications:

  • For trade marks that are phonetically, visually or conceptually similar to your proposed mark; and
  • That cover goods and/or services which are similar to your own.

Searching needs to be completed as soon as possible, and preferably before committing to use of a mark through developing advertising materials or packaging.

Protecting your intellectual property rights in China

China has a reputation for disregarding intellectual property rights. However, that is fast changing. The implementation of Free Trade Agreements and World Trade Organisation negotiations are increasing the appreciation of, and therefore enforceability of, intellectual property rights in China. It would be short sighted and naive to simply disregard the importance of protecting your intellectual property rights in China.

China places importance on being first to file on the trade mark register and does not recognise rights acquired through use. This means that an early filing date is very important.

Opportunties for New Zealand businesses

The Chinese speaking markets hold exciting potential for New Zealand businesses. There are massive opportunities for our goods and services due to substantial demand. However, it is important to take a strategic approach to identify any problems, and to protect your business against competitors. Consideration of the issues discussed above will put you in a good position to succeed.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

James and Wells is the 2010 New Zealand Law Awards winner of the Intellectual Property Law Award for excellence in client service.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Duncan Cotterill
James & Wells Intellectual Property
James & Wells Intellectual Property
James & Wells Intellectual Property
James & Wells Intellectual Property
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Duncan Cotterill
James & Wells Intellectual Property
James & Wells Intellectual Property
James & Wells Intellectual Property
James & Wells Intellectual Property
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions