Trade marks must be protected in Chinese

China has a huge population of 1.3 billion, but the majority do not understand words in the Latin alphabet. They can only read Chinese. Therefore, in order to promote the sales of goods, it is necessary to have Latin marks translated or transliterated into Chinese. All the international well-known trademarks have equivalent Chinese language marks registered and used in China, like Coca Cola 可口可乐, Pepsi 百事, McDonald's 麦当劳, Microsoft 微软, Apple 苹果, Starbucks 星巴克, Google 谷歌, Facebook 脸书, Chanel 香奈儿, Dior 迪奥, Louis Vuitton 路易威登, Armani 阿玛尼, Gucci 古驰, Versace 范思哲, Prada 普拉达, Zegna 杰尼亚, Valentino 华伦天奴, Bally 巴利, Burberry 巴宝莉, Adidas 阿迪达斯, Nike 耐克, MBW 宝马, Benz 奔驰, Ferrari 法拉利, Rolex 劳力士, Omega 欧米茄, Cartier 卡地亚, IKEA 宜家 etc.

It is the same case for the promotion of Chinese products in other countries. As non- Chinese speaking people do not understand Chinese, they shop by reading the Latin alphabet. When Chinese products are sold or services are provided in their countries, these products or services bear Latin alphabet marks, not Chinese marks, like Huawei, Alibaba, Taobao, Lenovo, Haier, Hisense, TZE.

When goods or services of international companies are in China, they are often mentioned by the Chinese media. If they have Chinese marks, reporting will be fluent and easily understood by Chinese people. If they do not have Chinese marks, the media will give a Chinese name to the goods or services so that Chinese people can understand. When international companies organise news releases or new product introduction meetings, they should use Chinese marks so that Chinese people easily remember their brands. During media promotions, Chinese marks become well known by Chinese people, who remember and talk about Chinese marks rather than Latin alphabet marks.

When Latin alphabet words are refused by the China Trademark Office and the review of the refusal fails, registration of a Chinese version of the mark is a good option. Chinese marks are better remembered than marks in the Latin alphabet and therefore better for promoting the sale of goods or services in China.

International trademarks are always the target of Chinese counterfeiters. When they know the international trademarks have no Chinese version, they will translate or transliterate them into Chinese and then register them. Once the Chinese marks are registered, they will wait for the trademark owners to come to them for an assignment for a very high price. There are increasing numbers of such assignments, which greatly encourage counterfeiters to register Chinese versions of international trademarks.

International trademarks are always the target of Chinese competitors. Michael Jordan (name of an NBA basketball player) was registered in China. Its Chinese version is 乔丹, which is very well known in China, but not registered. In 2012 it was registered by a Chinese sports company. Michael Jordan filed for cancellation with the China Trademark Review and Adjudication Board (TRAB), but failed. The cancellation procedure went through a first instance trial and second instance trial, but both failed. Finally, the cancellation was successful with the Supreme Court. The cancellation of the Chinese mark 乔丹 took four years.

When VIAGRA products were marketed, the Chinese media transliterated VIAGRA into 伟哥, which means "great man" and is phonetically similar to VIAGRA. It is therefore very easy to remember. It is a good Chinese mark for VIAGRA and soon became very well known in China, even better well known than VIAGRA. Indeed 伟哥 was even considered by consumers as the name. Pfizer has a registration for VIAGRA, but did not register 伟哥. In 1998, it was registered by a Chinese pharmaceutical company. Pfizer filed a cancellation with the TRAB, but failed. It failed at both first instance trial and second instance trial. The cancellation procedure lasted for eight years. It is said that the value of the Chinese mark 伟哥 is RMB700 million.

The two cases above should remind international trademark owners to watch closely the Chinese trademark given to their Latin alphabet marks by the Chinese media. When the Chinese media or consumers give a Chinese name, the trademark owner should register it as soon as possible. Otherwise, it will be registered by its competitors.

In the above 乔丹 case, the Chinese sports company, in addition to the registration of the Chinese mark 乔丹, also registered QIAODAN, Chinese Pinyin of 乔丹. Michael Jordan successfully cancelled the Chinese mark 乔丹, but failed to cancel Chinese Pinyin, QIAODAN. This case stresses the need for international trademark owners to register both the Chinese mark and Pinyin for Latin alphabet marks.

A Latin alphabet mark can be turned into a Chinese mark by either translation or transliteration.

If the Latin alphabet mark has a meaning, it will be translated into Chinese according to its meaning, like Microsoft 微软, Apple 苹果, Facebook 脸书 and Nestle 雀巢. Many different Chinese characters have the same meaning. It is advisable to choose characters that look nice and sound nice. 雀巢is a very good translation of Nestle.

There are some Latin alphabet marks that are both translated and transliterated, like Facebook. 脸书 is the translation of Facebook. It also has several transliterations:飞书博[ fei shu bo],飞思薄[ fei si bo],菲丝博克[ fei si bo ke].

If the Latin alphabet mark has no meaning, it will be transliterated by its pronunciation. To get a good Chinese mark by transliteration is much more difficult than by translation. As Chinese has four tones, one Latin alphabet mark could be transliterated into many Chinese characters. For example, when MA is pronounced in a flat tone, it means mother. When in an upwards tone, it means linen. When in a downwards tone, it means curse. When in a downwards and upwards tone, it means horse. Therefore it is not easy to get a good transliteration. To get a good transliteration, the following principles should be followed:

The pronunciation of a Chinese mark should be identical to or similar to that of the Latin alphabet mark. When the Chinese mark is pronounced, consumers will know it refers to this Latin alphabet mark. If the pronunciation is not identical or similar, the Chinese mark will have no connection to the Latin alphabet mark. The following are good examples:

The Chinese mark is 可口可乐 and its pronunciation [ke kou ke le] is very similar to that of the Latin alphabet mark, Coca Cola.

Armani 阿玛尼 [a ma ni]

Bally 巴利 [ba li]

Adidas 阿迪达斯 [a di da si]

Nike 耐克 [nai ke]

The Chinese pronunciation of the above marks is identical or very similar to the pronunciation of the Latin alphabet marks. If the pronunciations have any difference, the connection between the Chinese mark and the Latin alphabet mark becomes weak. The more similar in pronunciation, the more connection the marks will have.

As Chinese has four tones, one Latin alphabet mark could be transliterated into many Chinese characters. It is advisable to register more Chinese marks with identical or similar pronunciation in order to prevent competitors from registering different Chinese marks with identical or similar pronunciation.

FENDI registered two Chinese marks with the same pronunciation: 芬迪 [fen di], 芬帝 [fen di].

VERSACE registered four Chinese marks with the same pronunciation: 范思哲[fan si zhe], 梵斯哲[fan si zhe], 梵思哲[fan si zhe], 范斯哲 [fan si zhe].

GUCCI registered three Chinese marks with similar pronunciation: 古驰[gu chi], 古慈 [gu ci], 古奇[gu qi],

CHANEL registered two Chinese marks with similar pronunciation: 香奈尔 [xiang nai er], 夏内尔 [xia nei er]

Due to the four tones and the fact that a Latin alphabet mark can be transliterated into so many different Chinese characters, it is best to choose characters with a good meaning to impress consumers. A good example is below:

In the early 19 century, when Coca Cola first entered the Chinese market, it was transliterated as 口渴口辣. The pronunciation is very similar, but the meaning is not very good. It means "thirsty and mouth burning". With this transliteration, the products did not sell well. Then a new transliteration was designed, 可口可乐, which means "tasty and happiness". With this new transliteration, the products sold very well.

Marks with meaning and fewer characters are easily remembered by consumers. A mark with no specific meaning and composed of many characters is not a good transliteration. Chinese names with two or three characters are most popular in China, because two or three characters are short and easy to remember. A good example is below:

At the very beginning it was transliterated into four Chinese characters, 麦克当劳, [mai ke dang lao]. Later on it was changed to three characters, 麦当劳, which is much more easily remembered than four characters. The pronunciation of both versions is very close to that of the Latin alphabet mark.

To let consumers easily remember the marks, it is advisable to choose characters commonly used, which are read and remembered easily. Some characters have a very good meaning, but few people can read or understand their meaning. Marks consisting of such characters are not good marks.

Marks with a good meaning should not directly refer to the quality or function of the goods. Under Chinese Trademark Law, descriptive marks should not be approved for registration.

To get a good transliteration consisting of all the above principles is not an easy job. A mark which is phonetically similar may not have a good meaning or may consist of too many characters and not be easy to remember. A mark which has a good meaning and with few characters may not be phonetically similar.

When the Latin alphabet mark is transliterated, the Chinese mark should not be identical or similar to prior trademarks in order to avoid refusal. A clearance search should be conducted. If there are identical or similar prior Chinese marks, the Latin alphabet mark needs to be re-transliterated until it can be registered.

Lina LI
		Ms Lina Li is a trademark attorney at Jadong IP Law Firm. She has been practising in the trademark field for many years and has extensive experience in trademark prosecution for overseas clients, including trademark searches, applications, oppositions, invalidations and assignments. Her clients include many well-known international companies and law firms. She also has experience in anti-counterfeiting/brand protection, including investigations, raid actions and customs protection.

Yunze LIAN
		Mr Lian is the founder and head of Jadong IP Law Firm. He is a member of the first group of Chinese lawyers to emerge since China restored its lawyer system in 1979. He started his legal practice in 1982 and worked for 14 years with CCPIT. He has been practising in the IP field for 34 years and has extensive experience in trademark prosecution and enforcement. He is recognised as an IP expert both by the international brand owners he represents and by the IP community in general. He is a frequent speaker at many international conferences, such as INTA, AIPPI and MARQUES. He is a panellist at the CIETAC Domain Name Dispute Resolution Center, Asian Domain Name Dispute Resolution Centre, and Hong Kong International Arbitration Centre. He is a member of the China team of MARQUES and former committee member of the Anticounterfeiting Committee of INTA. He regularly receives awards from a variety of legal publications, like MIP, WTR, Chambers Asia-Pacific, Asia Leading Lawyers, Asia IP and Expert Guides. He writes extensively on intellectual property in many international publications. These are circulated in European countries.