Monday, January 12, 2009

Trademarks in China: Nomen Est Omen

Stan Abrams of China Hearsay fame blogged about why the car manufacturer SAIC choose for the name Roewe and how to pronounce that name. He contemplates that: "As a Chinese brand, the English name is of secondary importance. However, if you’re going to use the English brand prominently (and they do), you gotta give it some thought, especially if you want to be a major exporter."

Stan continues that it is peculiar that Roewe 荣威 is pronounced in Mandarin "rong wei", which sounds like the English words "wrong way". Read the China Hearsay article here.
Of course if you have a non-Chinese name and you want to sell your product to the Chinese market it is wise a translation/transliteration of your brand in at least Mandarin and/or Cantonese. Translation is possible if your name has a meaning too, for example Shell (the energy giant) means the external skeleton of a mollusc.
Let's say you are Shell Oil and you wants to sell your products in China, then you 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 energy provider, 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).

More about the trademarks and the special challenges in translation/transliteration of non-Chinese words into Chinese characters can be found in the powerpoint presentation of Paul Jones, of Toronto-based law firm Jones & Co., pages 18-31. The white paper of Marc Garnaut of Spark Media Lab is also about translating logos and brands into Chinese for the Chinese market, here.

1 comment:

Unknown said...

hello! great blog! here's a post I left on chinalawblog but unfortunately got no answer yet. here, thanks in advance:

Dear Dan, it's been a while. Nice post. Actually you nailed a part of my thesis I am writing. Namely "Famous Brands in China" and it concerns it's legislative timeline, the definition of well-known brand, the opposition procedures in China to a w-k brand, the compliances with WTO provisions and some case law. Not to mention I am having some trouble in finding a clear path through all this and am always eager to read other's opinions, I have a question or two, regarding your post.

IP Dragon mentions these 4 steps as a choice or as a combo of choices. I may have read them through too quickly but is it possible to adopt them all 4? What is the safest tm (+ famous tm registration) combination in China for foreign goods to be produced in or outside of China and to be sold in China?

Another concern: at the end of the post you say "or register more on it". Do you mean by that, it is possible to add registrations to one single tm registration (e.g. similar products with same tm name?).

What is your experience regarding well known brands in China, litigations, theory and practice at the moment and which were the most relevant milestones in the recent past?

Is the international definition finally decisive on the oppositions to famous brands in different countries?

Here is the last thing I want to bother you about: the USTR "suit" with Mexico against Chinese Ministry of Commerce (I think) in late December 08 regarding infringements of WTO provisions in the matter of tax reductions to domestic companies owners of famous brands, by this way altering the (global) market. What is your point of view and do you think they will find a settlement in the 60 days the WTO provisions set out to the parties or not?

Thanks in advance!