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Should You Register Your Trademark in Chinese?

Many foreign businesses are reluctant to register their brand name into Chinese

Many foreign businesses are reluctant to register their brand name into Chinese, assuming that the brand will be recognizable, distinctive, and protected by one trademark filing. In reality, it is critical to ensure that the trademark name is also registered in Chinese.

To begin with, it is important to understand that if the trademark is registered only in its original version i.e. Latin characters and pronunciation, protection is not granted to its Chinese equivalent. This means that virtually anybody can use the same or similar trademark, and register it using a combination of Chinese characters. In that scenario, the China Patent & Trademark Office (CTMO) would then most likely prevent you from registering your Chinese name later on. This is precisely what happened to the well-known French fashion brand Hermès who tried to register (a bit too late) its trademark in Chinese as 爱玛仕 but was prevented by the CTO from doing so as it was deemed similar to an already existing Chinese brand (爱马仕) on the basis that it could be misleading to Chinese consumers.

Following Hermès’ and other foreign brands’ misfortunes, it is important to remember that China is a “first to file” country. This means the legal protection is only granted to the first trademark to be filed to the CTMO. In this spirit, a trademark application can be declined solely on the basis that the brand is not the first to file a Chinese version and that it cannot demonstrate that it has become well-known in China prior to the rogue registration, despite having a pre-existing English-language registration in China. If the same or similar trademark is already registered in Chinese – it is practically impossible to successfully register another trademark with the same name, regardless of how recognizable and famous it is abroad.

Protecting the commercial value of your brand

In addition to the legal benefits of adding an extra layer of protection to your brand by registering it in Chinese, there are also numerous commercial benefits to it. More often than not, local consumers are simply not used to foreign brand names. Many are even unable to read and/or pronounce it correctly. In all likelihood, a Chinese equivalent to the original name will be adopted by consumers themselves, which may lead to misconception and misrepresentation of the actual brand name and image. One of the most famous illustration might be the American food conglomerate brand Quaker Oatmeals. The brand neglected the need to create a Chinese trademark upon entering the market, to later find out that the public began to call it “the old man brand” or ‘lao ren pai’ (老人牌). Needless to say, such interpretations can damage the reputation of your business and the products/services affiliated to it. By translating the name and adapting a correct Chinese version of it, you remain in control and thus ensure that your business has a positive and correct brand perception in the market.

 

Some tips on registering your trademark in Chinese

By registering your trademark in Chinese, as well as its native version, your brand identity will be the most protected from any kind of infringements. Doing so early on can save you from any potential legal disputes if someone else decides to use your brand name in Chinese. Finally, it is important to make sure that all of the possible translations are considered in order to avoid any misconceptions.

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Posted by Téo Doremus 2017-01-17 06:49:16 Facebook LinkedIn Twitter Comodo SSL