With over 1.4 million new trademark applications filed to China Trademark Office in 2011, which number is continuously growing at about 30% annually, it is no wonder that it is getting more and more difficult to successfully register trademarks in China, especially trademarks consisting of existing words/characters with positive meaning.
Due to the different policy and principle of the Trademark application and registration in China than many other countries, foreign applicants frequently encounter difficulties, problems as well as confusion during trademark prosecution at China Trademark Office (hereafter referred to as "TMO"). Hereunder are some tips and advice for those who are planning to or already filing trademark applications in China.
Localization of Trademarks in China
As we all know, Chinese language is a totally different language system from Latin language. The most fundamental and basic elements of Latin language are the letters such as "a", "b", "c"; while the basic elements in Chinese language are all shapes of parts of characters. Because of such huge differences between the languages, and because of the fact that among the 1.3 billion population in China, only 1/4 of them are learning English, it would be crucial to have a Chinese version of the Latin trademark if the applicant are seriously planning to develop business in China.
So how to select the right or appropriate Chinese equivalent of the original trademark would be the first question before filing the application. Generally there will be three types: translation, transliteration and combination of both translation and transliteration.
After the applicant has selected the Chinese characters as equivalents to the brand, either as translation or transliteration or both, there is something more the applicant should note: which version of characters to choose? The simplified version or the traditional version? Usually the traditional version looks more complicated with more parts of the character. Normally, if the applicant wants to show that the brand has a very long history or there is a nostalgic sentiment to be conveyed by the brand, the traditional version may be a better choice than the simplified version; otherwise, it would be recommended to choose the simplified version, because it is more widely used and understood in people's daily life than the traditional version.
Another task in selecting Chinese equivalent is to check how they are pronounced exactly not only in Mandarin, but also in Cantonese and other dialects in China, depending on which provinces the applicant wants to cover for business development. The reason of doing this is to avoid unexpected embarrassment because some elegant terms in Mandarin may have negative indications in other dialects, which will tarnish the brand and turn it into a black joke.
Then it comes to the design of the Chinese trademark, whether the applicant wants the standard version, or the stylized version.
So, with all these aspects in consideration, the applicant may say that it will take a long time for selecting, checking, designing and finalizing the Chinese trademark. But please also remember the "first-to-file" principle. From the first moment the English mark is used in China or is known in China, there may be Chinese versions of it given by the public if the applicant does not offer the Chinese equivalent of the mark at the same time, which will be very dangerous. The applicant may not even know that consumers are calling its brand with something foolish or indecent in Chinese; or someone else may file the Chinese version before the applicant finishes the design. So the strategy is filing a Chinese equivalent immediately and then if the applicant comes up with something better or more appropriate later, file that as trademark again, and the applicant may abandon the first one.
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.