China Law Blog

Foreign companies contemplating doing business in China are getting more sophisticated about the need to register their trademarks in China. I think. I say this because the number of companies contacting my firm who think the have a trademark in China simply by virtue of the fact that they may have one in Puducah has drastically declined. So if our post, entitled, "China Trademarks -- Do You Feel Lucky? Do You?" was China trademarking 101, this post, on what to trademark, should be China trademarking 102.

IP Dragon blog did a post, entitled, Trademarks in China: Nomen Est Omen that nicely sets out the basic alternatives companies face in deciding what to trademark in China, using Shell Oil Company as the example:

If Shell wants to sell their products in China they can do three things:

-- Register only your non-Chinese name, this is unwise, because it invites Chinese counterfeiters to jump into the vacuum;

-- Register also a translation of the meaning of the mark into Chinese, a so called conceptual translation. Shell, the oil giang, choose to translate the meaning of the external skeleton of a mollusc: 壳 shell you pronounce ke2 in Mandarin and hok3 in Cantonese, 牌 brand you pronounce pai2 in Mandarin and paai4 in Cantonese;

-- Another option is to register a transliterated or phonetic translated mark. This can be a great route, if you choose characters that correspond to the characteristics of the brand. Coca-cola transliterated its brand into ke kou ke le, but then you have to find Chinese characters that fit to your brand: if you do not pay attention you can find Chinese characters that are pronounced in Mandarin as "ke kou ke le", but which mean: "female horse fastened with wax". However, the Coca-Cola company paid attention and came with the splendid result: 可 ke3 (approve) 口 kou3 (mouth) together means tasty, 可 ke3 (approve) 乐 le4 (joy) or in the words of Marc Garnaut "permitting the mouth to rejoice".

After you choose between these options or a combination thereof, you have to decide whether you want to register traditional Chinese characters (used in Hong Kong, Macau and Taiwan) or simplified Chinese characters (used in People's Republic of China and Singapore).

There are really four primary considerations that go into deciding what to trademark. First, there are the legal issues, which should be handled by a lawyer. What is/are the best categories in which to file and what exactly should be filed? Second, there are the marketing issues, which should be handled by the marketing team of the company seeking the trademark. Thirdly, there are the Chinese linguistic and cultural issues that should be handled by someone both fluent in Mandarin (or maybe even Cantonese or whatever other language is being considered) and knowledgeable about Chinese marketing and culture. Lastly, there is the question of money as every additional filing costs.

In situations where our clients are making product in China for export only and their product has the trademark on it only in English, securing just an English language trademark is usually enough. In situations where a company intends to manufacture its product in China and eventually sell in China eventually, the company must weigh the costs and benefits of securing a Mandarin (or other language) trademark now, or just wait. In situations where the company knows it will be selling its product in China right away, it needs to analyze the options set forth by IP Dragon above. I would say that in almost all instances where our client's trademark has actual meaning (such as the word "Shell") they have chosen to trademark both the English and the Mandarin of the word. Rarely do our clients seek a China trademark in a language other than either English or Mandarin. Only around 25% of the time do our clients seek to secure the trademark for a transliterated or phonetic version of their English language trademark. Most of the time, they choose to wait and see how their product does in China and then, if it proves successful, they usually come back and register more on it.