(2) It is also important to bear in mind that the trade mark systems of territories such as China and Taiwan are based on a "first-to file" regime and therefore a third party may intentionally "pirate" or inadvertently file for an obvious Chinese version of the foreign mark. The owner of the foreign mark, when filing its own application, will find their application blocked. It is therefore important to file an application as soon as possible.
(3) There are essentially 2 ways of developing a Chinese mark from a "foreign" mark: (a) the conceptual or "translation" method - using characters to represent the meaning of the foreign word. (b) the phonetic or "transliteration" method - using characters which represent the sound of the foreign word. Care must be taken to achieve an accurate and appropriate translation or transliteration of the foreign mark.
(4) A common problem in adopting a conceptual translation is that the foreign mark may be impossible to translate (eg. an acronym or proper name) or objectionable (eg. as descriptive or laudatory). A direct translation of a foreign mark may also not be suitable for use as a trade mark in Chinese.
(5) When adopting a transliteration, auspicious or otherwise pleasing words which produce sounds relatively close to the original English mark should be chosen. Ideally, they should also have some reference to the product or service but care should be taken to avoid choosing descriptive or laudatory words.
(6) One problem in adopting a phonetic transliteration is that while it can produce sounds similar to the original English mark in one dialect, this phonetic equivalence may be lost in other dialects. Also, a trade mark successfully translated in one dialect may produce negative connotations in other dialects (eg. in Cantonese and Mandarin). We can assist in devising a Chinese mark and in checking that the proposed Chinese mark is phonetically suitable for each relevant region of China and does not produce such negative connotations.
(7) Where a transliteration mark is adopted, since there may be more than one possible transliteration, a third party could use a different transliteration in connection with the same product, without necessarily infringing the mark. The test is whether the third party's mark is sufficiently similar to mislead the public.
(8) Because of this, there is little point in registering a transliteration mark on a defensive basis, unless the mark is one which will definitely be used in the future.
(9) Registration of a translation mark, on the other hand, may have defensive value. Where the mark may be translated several ways, registration should be effected for each. That said, registration of the foreign mark may, in China and other Chinese speaking jurisdictions, give rights in itself to prevent use of the translation of the mark by others.
(10) For many characters, simplified character sets are used in mainland China, while neighbouring territories such as Taiwan and Hong Kong use traditional character sets. Where the two character sets are different, registration should be obtained for the character style which will actually be used. (This should normally be sufficient to prevent others from applying for or using the other character style.)
(11) When selecting a Chinese mark, consideration should also be given to its effect (and to its registration) in jurisdictions outside mainland China where there are significant Chinese populations, including Taiwan, Hong Kong, Macau, Singapore, Malaysia, Thailand and Indonesia.
Linklaters & Paines
FURTHER INFORMATION on the above may be obtained via Linklaters & Paines Hong Kong office or via any of the other nine Linklaters & Paines offices world-wide, located in Singapore, Tokyo, London, Brussels, Paris, Frankfurt, New York, Washington D.C. and Moscow. Contact details for the various L&P offices worldwide are available via the Linklaters & Paines corporate listing c/o Business Monitor Online - http://www.businessmonitor.co.uk