A Chinese version of a non-Chinese-character (i.e. foreign-character) trademark or a foreign-character trade name increasingly draws the attention of foreign enterprises and is becoming a precondition for a foreign enterprise when (or before) it starts to enter into the Chinese market.
The Necessity of obtaining registration for the Chinese version of your Brand
1. Completing the Marketing Strategy in China
Marketing managers may suggest promoting a foreign brand with the foreign-character trademark to maintain its originality. However, marketing in China should consider the Chinese consumers' view. A Chinese version is more convenient for Chinese media to broadcast and spread the reputation of the foreign brand among relevant public. Anyhow, what is more important in the promotion and advertisement is how to facilitate Chinese consumers to read and remember the mark of certain products/services.
2. Initiatively taking Defensive Measure against the possible Infringement
The legal protection regarding the unregistered Chinese version of foreign brands is one of the hot topics in IP industry. A Chinese version may be automatically given by Chinese consumers/media during promoting or marketing activities. Consequently, the risk is that a third party may preemptively file the application for such Chinese version to take a free-ride upon the trademark owner’s reputation.
China adopts the “first-to-file” principle. Thus, it would be a tough battle to seek the protection for unregistered Chinese version afterward. Compared with fighting against the preemptive applications/registrations of the Chinese version, filing applications for its Chinese version as early as possible is a more cost-effective and time-saving approach.
How to decide a Chinese version for a Foreign-character Brand
- Aspects to be considered
Choosing a Chinese version for a foreign-character brand should consider the following aspects:
1. The origination of the foreign-character brand
2. The nature and advantage of its products/services
3. The target market and consumption level
4. The Chinese culture and positive association
5. Fair sounding
The following principles should be jointly considered:
1. The Chinese version should correspond with its foreign-character mark in either pronunciation or meaning, or preferably in both ways to establish a stronger connection.
2. The Chinese phrase should be comprehensible, and easily to be called and remembered.
3. The Chinese version should be equipped with the similar advantageous features of the products/services in the same industry and emphasize the differences and novelty of its own. Preferably, a proper Chinese version could also function as a symbol for guarantee on quality.
4. It is necessary to check the Chinese version regarding the meaning of individual character, and to check its overall meaning. Although some Chinese characters may not possess negative meaning in a certain industry, they may cause unnecessary misunderstanding or misleading in a different industry.
There are 4 methods of choosing a Chinese version for a foreign-character trademark.
1. Direct Translation
If the foreign-character mark possesses a dictionary meaning in its original language, and if the one-to-one correspondence can be established without disadvantage or negative association, the direct Chinese dictionary meaning is a good option.
Examples: “Apple” and “Beetle”
“Apple” is the trade name of Apple Inc. and the direct description of its distinctive logo .
Now, “Apple” is not only a name of a fruit but a symbol for high-tech and fashion. The official Chinese version of this famous brand is its direct Chinese dictionary meaning, i.e. “苹果”.
In the same way, the Chinese version of the German auto brand “Beetle” is “甲壳虫”, which is a direct description on the appearance of this stylized car.
Any subsequent application for “苹果” or “甲壳虫” designated on the goods/services identical with/similar to those covered by “Apple” and “Beetle” registrations will be rejected by Chinese examiners.
According to the Chinese practice, the famous foreign-character mark with high reputation can block others from obtaining registration of its Chinese dictionary meaning in respect of identical/similar goods/services. That is, the registration of a foreign-character mark which has a dictionary meaning can cover the protection of its one-to-one correspondence translation since these two marks will be deemed as similar by the examiners in respect of identical/similar goods/services.
However, the registration of such foreign-character mark can neither extend the protection for various paraphrases of its Chinese dictionary meaning, nor extend the protection for its various transliterations.
The most popular method of choosing a Chinese version is to utilize its transliteration. There are two examples: (1) one of its Chinese transliterations, or (2) the Chinese characters with less similarity on pronunciation but with positive/appropriate meanings.
The Chinese version of “CHANEL” is “香奈儿(XIANG-NAI-ER)” which is pronounced highly similar to “CHANEL” in French and sounds elegant in Chinese. The Chinese characters “香奈儿” have no specific meaning. Respectively, “香” means “fragrant”, “奈” has no specific nor negative meaning, “儿” is a modal particle here. The similarity on pronunciation strengthens the connection between these two versions and increases the brand perception in Chinese market.
The Chinese version of “CLARINS” is “娇韵诗(JIAO-YUN-SHI)” which is pronounced differently from “CLARINS” in French but possesses fancy characteristics. The Chinese characters “娇韵诗” have no specific meaning. Respectively, “娇”, “韵” and “诗” means “tender”, “charm” and “poem”. Accordingly, “娇韵诗” is feminine in nature and attractive to female consumers, which perfectly fits the cosmetics industry and is easily called and remembered.
Although “CLARINS” is maintained on its products in Chinese market, the Chinese consumers can find its Chinese version in the description, the advertisement, etc. The connection between “CLARINS” and “娇韵诗” is enhanced by its products with high-class quality, long-term and extensive promotion.
- Utilizing Transliteration instead of Direct Translation
Regardless the foreign-character brand possesses a dictionary meaning, transliteration is always an option. In practice, many international companies chose the Chinese transliteration for their foreign-character marks even though their marks possess a dictionary meaning.
The direct translation of “Honeywell” is “蜜井(“sweet well” in Chinese)”. Whereas, its official Chinese name is “霍尼韦尔(HUO-NI-WEI-ER)” which is the transliteration of “Honeywell”. It is speculated that the direct translation of “Honeywell” sounds less of splendor, which cannot match its image as a multinational conglomerate enterprise and may cause misunderstanding of its products among Chinese public.
“Hummer” is the common name of Trochilidae which brings an image of lovely and lightness in Chinese. Obviously, the dictionary meaning of “Hummer”, i.e. “蜂鸟” extremely goes against its target market in China without the historical backgrounds and knowledge of this brand. Accordingly, the trademark owner of “HUMMER” chooses “悍马(HAN-MA)” which means “Doughty Horse” as its Chinese version. This Chinese version perfectly conveys the nature and advantage of this off-road vehicle.
Although some foreign-character trademarks possess a dictionary meaning, such dictionary meaning in Chinese may not be suitable as a trademark using on its products/services. Thus, a paraphrase of such dictionary meaning would be a better choice.
The dictionary meaning of “LA MER” is “大海(ocean)”, whereas, its official Chinese version is “海蓝之谜(translated as “Secret of Blue Sea”)”. Obviously, the dictionary meaning of “LA MER” is too simple and unattractive to the Chinese consumers, especially in the high-class cosmetics industry. Whereas, the elegant paraphrase of its dictionary meaning increases its distinctiveness and identifiability of its luxurious products among public.
4. Combination of Transliteration and Paraphrase
The ideal Chinese version of a foreign-character mark may be the combination of its transliteration and paraphrase. The high similarity on pronunciation and the Chinese characters with proper meaning could establish a strong connection between the two versions and advertise the products/services.
One successful case regarding Chinese version of foreign-character trademark is “Coca Cola”. The Chinese characters “可口” means “tasty” and “可乐” means “be happy”, and “可口可乐(KE-KOU-KE-LE)” is easy to be read and remembered. Its high readability fully expresses one objective of this company, i.e. To spread happiness all over the world.
“Safeguard” is mainly used on soap, shower gel, etc. Its Chinese version “舒肤佳(SHU-FU-JIA)” is pronounced similar to “Safeguard” and the meanings of each Chinese character are “comfort”, “skin” and “excellent”. “舒肤佳” perfectly fits the nature of the products bearing this mark with fair sounding.
As the Korean brand of preservation boxes, “LOCK & LOCK” visually describes the important function of its products. Its Chinese version “乐扣乐扣(LE-KOU-LE-KOU)” primely keeps its original pronunciation and reveals the function of the products since the Chinese characters “乐” means “happy” and “扣” means “lock up”. Moreover, “乐扣乐扣” sounds catchy in Chinese with positive association.
- Noteworthy Negative Precedent
1. Inconsiderateness of Culture Background
Due to the language barrier between Chinese and other languages, the culture background is a crucial aspect. The Chinese version of a foreign-character trademark should conform to Chinese culture. The unintentional negligence may cause negative association.
In order to meet the requirement of imported alcohol, the importer of this German bear brand named it as “沃斯乐”. Although the Chinese characters “沃斯乐(WO-SI-LE)” is literally meaningless and the last character “乐” even means “happiness”, its pronunciation is almost identical with “我死了(WO-SI-LE)” expect for different tones, while the latter means “I-am-dead”. Such infelicity pronunciation will undoubtedly affect the sales in Chinese market. This example reflects a phenomenon that two Chinese phrases share the same pronunciation but bear exactly different meanings.
2. Too long to be called
Generally speaking, the Chinese version should be limited to 2-4 Chinese characters. During fast-paced daily life, young generation communicates in various and creative manners. The use of language is getting shorter and more succinct. A long brand name is time-consuming in terms of calling/expressing, and hard to be remembered.
Although “Sony Ericsson Mobile Communications (SEMC)” is no longer in existence, the trademark disputation regarding “索爱” is remarkable and stands as a warning sign for others to avoid such situation.
The official Chinese version for “Sony Ericsson” was its full transliteration “索尼爱立信”. The Chinese characters “索爱(SUO-AI)” are short for “索尼爱立信(SUO-NI-AI-LI-XIN)”, which is much easier to be called and remembered. Despite that “索爱” was neither created nor officially used by SEMC, it is no doubt that “索爱” had been widely accepted and became popular among Chinese public. Therefore, “Sony Ericsson” is connected with “索爱” closely and passively by the relevant public in respect of mobile phone and relevant products.
However, the application for “索爱” in Class 9 covering “MP3, mobile phones, etc.” was first filed by an individual in 2003 and had been granted registration in 2004. In 2005, the registrant of “索爱” established his own company and started to manufacture and sell the products bearing this trademark.
When SEMC noticed the confusion and misleading caused by “索爱” among the relevant public, it filed the Cancellation on Dispute against this registration with the Trademark Review and Adjudication Board (TRAB) in 2005 but failed. Then, this case went through the examination before the TRAB, the Intermediate Court and the Higher Court but repeatedly failed. According to the final decision in 2010, “索爱” is maintained due to the fact that SEMC never used or promoted “索爱” as its trademark on its products in Class 9, or accepted it as a shortened form for “索尼爱立信” before the filing date of “索爱”.
How to protect your trademark in the Chinese market
In spite of the high similarity on pronunciation between a foreign-character mark and its Chinese transliteration, the foreign-character mark will not be automatically deemed as similar to its Chinese transliteration even though the applicant officially uses the Chinese transliteration.
In Chinese language, one foreign-character mark can be transliterated into many Chinese versions. Considering the one-to-many relationship, it is almost impossible to establish the argument that the foreign-character mark is similar to its Chinese transliteration under Chinese examination criteria. Unless, a specific Chinese version has been broadly used by the owner of its foreign-character mark in a long term. In such circumstance, a huge amount of evidence should be presented to prove that:
(1) the foreign-character mark has obtained high reputation in China through long-term of use;
(2) the one-to-one correspondence between this specific Chinese version and its foreign-character mark has been established through practical use by the owner of latter; and
(3) this specific Chinese version firstly created and used by the same owner.
Accordingly, the registration of one foreign-character mark alone can neither establish priority to its corresponding Chinese transliteration, nor prevent others from filing various Chinese versions with similar pronunciation but different characters. Obtaining registration for the Chinese version initiatively is a task which can not be delayed.
In terms of the marketing and practical use, it is feasible to file the applications for the foreign-character mark and its Chinese version respectively. The use of foreign-character mark on its products can keep the originality and high-class stylization. Meanwhile, the packages, promotion materials and marketing activities bearing both the foreign-character mark and its Chinese version could establish the relationship between the two marks and increase the recognition degree among public. The consumers would choose their own way of calling, remembering and spreading this foreign brand based on their education level of languages and knowledge of the products.
Selecting a proper Chinese version for a foreign-character trademark is not an easy task. From the microcosmic perspective, it represents not only the products/services of your company, but its quality and reputation. From the macroscopic perspective, it will influence the whole marketing strategy in the Great China.