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
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
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
Then it comes to the design of the Chinese trademark, whether
the applicant wants the standard version, or the stylized
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.
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