Keywords: intellectual property, means of individualization, exclusive rights, registration of subject-matters of intellectual property, trademark, registration of a trademark, filing an application for a trademark, trademarks in China, registration of a trademark in China, protectability of a trademark, registration and protection of intellectual property in China.
This article is devoted to the registration of trademarks of foreign companies in China, which, having decided to expand their business and enter the Chinese market, wish to obtain a full legal protection of their brand on the territory of China. The difficulty is that in addition to registering the “original” trademarks (usually in the Latin alphabet), such companies are advised to adapt these marks in a certain way and register their Chinese “versions,” so that, first of all, to deserve the attention and confidence of the Chinese consumer, and, secondly, to obtain the maximum legal protection for their designations in China. In any case, the carefully selected “Chinese” trademarks can play a decisive role in success of the brand and the whole business in the PRC.
First of all, the need for the “adaptation” of the mark is connected with the fact that the registration of the designation in the Latin alphabet does not lead to the provision of the legal protection in China to identical/similar designations performed in Chinese. Therefore, it is very desirable to register the “Chinese” version of the mark. Also, if the foreign trademark does not have a special “Chinese” version, there is a very high probability that Chinese consumers will invent such version either by translation or transliteration, or by some other way. Moreover, eventually, there will be a designation that will evoke from the consumers the associations and emotions entirely different from the ones that the right holder of the original mark would like to evoke.
As a quarter of the consumers of goods and services in the world are Chinese, the process of adapting the mark for the Chinese market is really vital. Not only the meaning but also the sound, “tonality” and even the appearance of the Chinese characters can affect the reputation of the brand significantly. Brand RALPH LAUREN can serve as an example. It has entered the Chinese market only with its “original,” world-famous mark. Based on the legendary image, the Chinese consumers have created their version of this mark: it meant literally (translated from the Chinese) “a horse with three legs.” Obviously, such associations for the brand holders are undesirable.
It is obvious, that to develop a new, “adapted” for China mark, it is desirable to resort to the help of the Chinese patent attorneys, professional marketers, and obligatory to the native speakers of the Chinese language, so that to create from the outset a positive reputation and to avoid mistakes, the correction of which in future can be very lengthy and costly.
It is natural, that when adapting one's marks to the Chinese market, it is necessary that the designation should comply with the requirements of the trademark legislation of China. Among other things, the new designation should be distinctive, should not to be descriptive for the applied list of goods and services (not to indicate to their kind, destination and essential characteristics in a direct and obvious manner), as well as not to infringe other stipulated requirements.
From the point of view of linguistics, the adapted trademark must comply with grammatical rules, have a clear and distinct pronunciation, and be brief enough and easy to remember. From the point of view of marketing and advertising, the trademark must be new, original and evoke pleasant associations among the consumers, comply with the scope of activity of the company-applicant and its market orientation.
Foreign trademarks, executed, as a rule, in the Latin alphabet, shall be adapted to the peculiarities of the Chinese market with the help of several basic methods: the translation into Chinese, transliteration and “adaptation.”
If the foreign trademark has a particular semantic meaning, then its literal translation (what has been done for APPLE and SHELL) can be used for its adaptation. However, the proportion of marks that have a particular meaning and can be translated unequivocally into Chinese is quite small. Also, even if there is a literal translation, many companies prefer not to use it, for example, because of the difficulties in pronunciation or for some other reasons. The apparent defect of a literal translation method is a different tone of the original and adapted mark. And this, in turn, means that it is necessary to spend a lot of time and money to create strong associations between the “original” and its modification among the consumers.
The transliteration allows “composing” a new trademark by using the Chinese characters, the combination of which reflects the pronunciation of the original foreign mark. The majority of the Chinese trademarks have no semantic meaning (the Chinese versions of CADILLAC, ARMANI, etc.) This method is preferable, when the trademark has already gained certain popularity among the Chinese consumers.
The “adjusting” of the mark occurs through the selection of such Chinese characters and phrases that have some semantic meaning, which reflects the nature, peculiarities of the original mark, while creating unique positive associations. This method is somewhat similar to the translation, but it is more original and fantasy. For example, designation “BMW” itself does not have a semantic meaning. It has been adapted to the Chinese market by “adjusting”: the designation has been selected, which is translated from Chinese as a “precious horse” (Eng.: “precious horse”). This designation intertwines with the historical significance of horses for China. It reflects the cultural peculiarities of the Chinese culture and evokes a positive emotional response from the Chinese consumers. Coca-Cola has chosen “Ke Kou Ke Le” version, which means “try and be happy”: another example of success.
As a rule, foreign companies, when adapting the mark, combine all these three methods, taking into account the characteristics of the applied goods and services, the consumer's psychology and the market peculiarities. Such adaptation may require considerable efforts to make the new mark directly linked to the original mark, to provide it with a clear and distinct pronunciation and high distinctiveness, individualizing the goods and services of the applicant on the Chinese market.
In any case, when developing a new, adapted mark, it is necessary to carry out a search to avoid the refusal in the registration because of the existence of identical/similar marks and applied designations. It should be remembered that the legislation of China is based on the principle of registering the mark of the applicant, who has first filed an application. Therefore, it is necessary to develop and register a mark always before starting any commercial activity in China.
Based on the aforesaid, we shall give below some brief pieces of advice on adapting and protecting a brand in China:
- Before entering the Chinese market, it is necessary to file applications for the registration of trademarks: of both the “original” designations made in the Latin/Cyrillic alphabet and new marks “adapted” for China by the literal translation, transliteration or “adjusting” or by several methods simultaneously. Before filing applications, it is advisable to carry out searches for the registered trademarks and applied designations, the legal protection of which has been granted or applied on the territory of China, to avoid the refusal to register on the relative grounds.
- It is advisable to file several applications simultaneously. Especially it concerns the “adapted” marks. This factor will increase the chances of obtaining the legal protection for at least one of these designations.
- When filing an application, you should check the list of goods and services thoroughly, to avoid annoying omittances and not to create opportunities to use them by the competitors.
- From the very beginning of the use of trademarks in the Chinese market it is highly undesirable to change and modify them voluntary; otherwise, the legal protection of the registered marks may be terminated because of the non-use. And third parties can try to register the used “modifications,” which, in fact, have not the legal protection.
- It is necessary to collect permanently the evidence of the use of the registered trademarks: they may be necessary if someone files an opposition, claim for the non-use, or in any other way tries to prevent the provision and operation of the legal protection of the marks on the territory of China.
- Monitoring of applications for trademarks is quite popular. It is carried out with the aim of identifying similar/identical designations and filing an opposition to the applications in time. This tool is one of the ways of fighting against unfair registrations.
Taking into account the peculiarities of the Chinese language, the Chinese legislation and the Chinese market, the thorough selection and registration of the designations that you plan to use to individualize your goods and services on the territory of the PRC can provide a full and comprehensive protection of your brand and lay the foundation for the effective marketing, promotion and, in general, success of your business in China.