CHINA: The Problems Encountered in Registering Trademarks in China

Apart from the usual problems inherent in the registration of a trademark, applying for a trademark in China implies even additional hurdles for IP stakeholders. These added problems are not at all related to the “first to file” principle, which applies in most of the jurisdictions in the world and means that in order to be protected, the trademark must be registered, and not by relying on existing unregistered trademark rights.

The problems we address in this article are related to the registration of trademarks in China that are inherent in the characteristics of the Chinese language and Chinese characters, which are described below. Furthermore, since the Chinese population in general is not able to read Roman characters, they will not know how to pronounce them so the image and connotation that the trademark owner wishes to convey to the consumers may not be the correct one. For example, when the trademark “Ralph Lauren” was introduced into China, the general Chinese consumers created their own understanding and name for the trademark. This well-known brand eventually became known as ‘San Jiao Ma’ (三脚马), which can be translated as “three legged horse”.

In this sense, trademark owners need to be carefully advised when they wish to introduce their brands into the Chinese market. Besides the “standard” trademark application, with the Roman characters (being verbal or figurative trademarks) usually there are three approaches used in this field, namely:

1. Create a literal translation;
2. Create a phonetic translation (transliteration);
3. Create a completely distinctive Chinese trademark.

The first approach is the most common and it applies when the trademark has a distinctive meaning. The downside is the fact that the trademark will not sound the same as the original which would entail spending more time and money in marketing the brand. The case of the trademark “Apple” is a good example. Apple chose to register the name “Ping Guo” (苹果), which is the Chinese translation for “Apple”.

The second approach is much more preferable, particularly for the trademarks which enjoy already a certain degree of prestige among Chinese consumers. For instance, in China, “McDonald’s” is known as ‘Mai Dang Lao’ (麦当劳) and “Audi” as “Ao Di” (奥迪). However, trademark holders should be careful when creating this kind of phonetic translation, since the final result may create an undesirable meaning in one of the six Chinese dialects.

The last approach is the most difficult one, yet the best one. In this case, trademark owners will succeed in creating a unique and original Chinese trademark, combining a phonetic and a literal translation in order to try to convey the exactly meaning of their trademarks, seeking, at the same time, to maintain the same sound. The disadvantage of this method is the cost and time involved in creating and marketing the trademark.

Regardless of the approach chosen, it is essential firstly to avoid negative connotations, mistranslations or misunderstandings taking into account the Chinese language and culture. Secondly, it is also relevant to devise a trademark which works, as much as possible, equally well in Mandarin and in the remaining Chinese dialects, even those which are spoken outside of Mainland China, such as, for example, in Hong-Kong, Macau or Taiwan.