The Chinese trade mark office (CTMO) has announced that as of January 1, 2015 it will now accept trade mark applications which seek to cover the services “providing online market for the buyer and seller of goods or services” in subclass 3503 of class 35 although the terms “retail and wholesale services” will still remain unacceptable in class 35.
Up until now, the CTMO has not recognized the protection of any types of retail services in class 35. However, this important change means the CTMO has, in effect, opened its door for “online retail and wholesale services” in class 35 and will be of great significance to online retailers and shopping websites such as eBay and Amazon.
In light of these changes, we would recommend that clients with an interest in online retail and wholesale services in China contact their usual trade mark attorney to discuss the potential filing of additional applications to cover these services.
Reminder regarding Chinese translations of marks
Whilst discussing China, we would also remind clients who have an active interest in China, or who are considering entering the market in China, to carefully consider how their trade mark will be translated by the receiving Chinese public. In China, many consumers cannot readily comprehend words written in Roman letters. Chinese consumers will therefore generally refer to foreign brands by reference to Chinese versions. Consequently adopting a Chinese equivalent trade mark removes language barriers, improves recognition of a trade mark and enables your products to reach a wider market.
If no official Chinese version is provided and promoted by you, the local Chinese market will create its own. The risk in allowing the local Chinese market to create its own Chinese version of your trade mark is that you may not like it; things can get lost in translation and the Chinese version may not necessarily have the desired connotations or image.
Chinese trade marks therefore need to be carefully developed with the help and guidance of trade mark, marketing and public relation experts as well as native speakers and translators. Once the Chinese version has been created and searches undertaken to check the availability of the mark in China, you should take steps to register your mark. If the Chinese version is not registered, there is a risk that a third party may register it. It can be very difficult to successfully challenge such registrations due to the difficulty in proving that the Roman letter and Chinese character marks are recognized by consumers as equivalents.
Another useful point to bear in mind is that registration of a foreign language mark in Roman letters is unlikely to be infringed by use of a Chinese character equivalent and vice versa as the marks will look and sound different or convey different ideas. Therefore both versions should be protected.
China operates a “first to file” trade mark protection system. Therefore, if China is a key territory of importance for your business or is likely to be so in the near future, then we would strongly recommend taking steps to register your trade mark now so as to ensure that your rights are safely protected and to prevent other unscrupulous third parties from doing so instead.