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China Trademarks. Where Your Name Is An Image. Think Like A Chinese Consumer.

Posted in Legal News

Until a few years ago, English language trademarks were relatively easy to secure in China. We would figure out the right trademark category or categories under China’s trademarking system, we would pick the right classes within the category(ies), and then we would get approval from the China Trademark Office to file the particular trademark. Then we would wait for the actual trademark registration to issue.
The rapid increase in trademark filings in China over the last few years has made filing for a trademark in China much more difficult. Let me explain.
In the old days, once we had counseled our client on what China’s Trademark Office allows and does not allow as a trademark, we were able to secure registration of virtually every English language trademark we sought to file. China’s Trademark Office would approve virtually everything for trademark registration because it did not consider the trademark we were seeking to file would likely cause confusion for the average Chinese consumer. In other words, what we were seeking to have registered as a Chinese trademark was different enough from all existing Chinese trademarks in the same category so as not to cause confusion for Chinese consumers.
But with the onslaught of trademark filings in China, we are now quite frequently having to go back and tell our clients either that there is no way their proposed China trademark will be accepted by the China Trademark Office or that there is at least some or a good likelihood that it will not. At that point, we work with them on deciding whether to go forward in trying to secure the trademark or in trying to come up with a new one.
In many cases, what the Chinese Trademark Office considers likely to cause confusion will be very different from what most English speakers would expect. The problem arises from the fact that English language names and Roman alphabet acronyms are viewed by the China Trademark Offices as images. So if you are seeking to register something like the word “Aviation” as your trademark and someone else has already registered the word “Avatar” as its trademark in the same category for which you are seeking to register “Aviation,” there is at least a decent chance the China Trademark Office will refuse to register your “Aviation” trademark. It might refuse to register the name “Aviation” in China because it might see it as being too close to the already registered “Avatar” trademark and therefore likely to cause confusion for the average Chinese consumer.
This also has been happening fairly frequently with acronyms and made up three letter names. As an example (based on a number of trademark matters we have handled, but completely made up for this post), let’s say you want to register the trademark “ABC” in a particular category. You go to the Chinese Trademark Office and request it register the trademark “ABC” in the China trademark category you have chosen. You have done the trademark search in that particular category of Chinese trademarks and have found that nobody has yet registered “ABC” as a trademark within that category and you are not anticipating any problems. But you almost certainly do. There is a very good chance the Chinese trademark office will reject your “ABC” filing because it is too close to a previously filed trademark, such as “CBA.”
Now I know all of this probably sounds crazy to you as an English speaker, but when you really think about it, it is not.
If you are fluent in English, ‘Aviation” is one word and “Avatar” is clearly another. And if you are fluent in English, “ABC” is nothing like “CBA.” But if you are the average Chinese consumer, (which means you do not read English) and you see these four “items” as nothing more than images, then it is not so crazy to think that there might be confusion between the words “Aviation” and “Avatar” and between “ABC” and “CBA.” And since confusion to the average Chinese consumer is the standard and since that is the standard by which China’s Trademark Office determines what trademarks it will and will not register, it is really not so crazy after all.
So what can you do if you want to register “ABC” and the Trademark Office will not allow you to do so because it views “CBA” as confusingly similar? You can appeal to China’s Trademark Review and Adjudication Board (TRAB) and if you fail there, you can take it to the Chinese courts. The key is usually showing/proving (oftentimes through consumer surveys) that the Trademark Office was wrong about the likelihood of confusion for the average Chinese customer.
Chinese trademarking…..not so easy any more.
What have you been seeing out there on this?
UPDATE: Stan Abrams over at China Hearsay did a post on China trademarks as well today, entitled, “China Trademarks: When Similar Ain’t So Similar,” in which he analyzes a few examples of similar looking names and logos to determine whether they violate China trademarks.

  • http://twofish.wordpress.com/ Twofish

    The first thought that comes to my mind is that this may have something to do with the fact that the Chinese language is character based and Chinese calligraphy is something of an art form.
    If you have Chinese company A who registers a trademark, and the Chinese company B comes in and tries to register a trademark using characters that mean something completely different, but look very similar, then of course the trademark office is going to reject the trademark. “Sun (ri) Company” and “Speaking (yue) Company” are going to have confusingly similar trademarks because the characters look very similar.
    It’s not hard to see why the trademark office would extend this to Roman characters.

  • http://twofish.wordpress.com/ Twofish

    There are also linguistic reasons why the trademark office would reject reversed trademarks. Chinese can be written right to left as well as left to right, so that trademarks that differ only in order are going to be considered to be confusing.

  • http://www.chinafirstcapital.com China First Capital

    Very interesting, not surprising trademarks are viewed as images when you think about the nature of Chinese characters and how its written language truly is a system of images, more hieroglyph than alphabet.