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.

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