This article discusses three common issues that arise in the trade mark examination process in China which trade mark applicants must be aware of. Most, if not all, trade mark applications will face at least one of these issues unless care is taken to avoid them before filing.
Requirement for Chinese version of company name
Trade mark applicants are required to provide a Chinese version of their company name when filing a trade mark application in China.
It is especially important to adopt an appropriate Chinese name as it will effectively be the face behind the brand in China. As a consequence, converting an English name into a Chinese one is a complex task that requires a lot of consideration.
There are two main approaches that trade mark applicants can take when translating their English company name into Chinese:
- Translate the meaning/concept of the company name; OR
- Translate the company name phonetically based on its pronunciation.
Within these two approaches, there are multiple ways that a name can be translated due to the nature of the Chinese language and its use of Chinese characters. For instance, numerous Chinese characters can be used to make a certain sound, but each will convey a different meaning.
As a consequence, when developing a Chinese name, trade mark applicants must consider the appearance and sound of the Chinese characters used, and specifically the positive and negative connotations the sound or appearance of the Chinese characters that are chosen might evoke. For example, it would be unwise to choose a Chinese character which sounds similar to the Chinese character/word for “death”.
The best Chinese names combine both approaches – that is, they use characters that:
- Sound like the English name; AND
- Mean something similar to the English name or have positive connotations in relation to the product.
To give the most well-known example, the Chinese name for COCA-COLA is 可口可乐 (pronounced KE KOU KE LE). Not only does the Chinese name sound very similar to COCA-COLA, it evokes connotations of a drink that is tasty and makes one happy, which is the objective of a Coca-Cola drink.
Unacceptable specification of goods and services
Trade mark applicants are required to submit a specification of goods and services that conforms with the China National Intellectual Property Administration’s (“CNIPA”) trade mark practice guidelines.
Unlike IP Australia and IPONZ, the CNIPA operates strictly on a prescriptive basis and will only accept items that have been drawn from its pre-approved list of goods and services. Importantly, the CNIPA does not allow any flexibility as to the wording of specifications: either an item has been approved and is acceptable, or it has not been recognised and will be refused.
Additionally, trade mark applicants need to appreciate that the wording of a specification of goods and services will likely be lost in translation. Applicants will submit their list of goods/services to be covered by their Chinese trade mark application in English. The words used to describe the goods/services are then translated into Chinese and then often replaced with terms which are on the CNIPA’s list of approved items. These terms are then translated back into English for the benefit of the English-speaking applicant.
The final English text of the Chinese specification of goods and services will often cover items of no apparent interest to the applicant. Nevertheless, if done properly, the terms selected should fall within the trade mark subclass that covers the goods/services of interest to the applicant, with the effect that protection is afforded to all goods/services in that subclass.
If the CNIPA objects to any item in a specification of goods and services, trade mark applicants will only have one chance to make amendments. These amendments must conform with the CNIPA’s pre-approved list of goods and services as any further objections will result in the entire application being rejected.
It is therefore advisable that trade mark applicants file national applications directly into China instead of filing an international application via the Madrid Protocol. Filing nationally allows applicants to draft their specification of goods and services correctly beforehand and avoid the extra step and costs of having to respond to a specification objection.
Trade mark is misleading and deceptive
Related to the need for an acceptable specification of goods and services is the requirement that trade mark applicants be sure that their trade mark is not unknowingly misleading and deceptive according to Chinese trade mark law.
Due to a poor understanding of English among most Chinese consumers, the use of common English words has the potential to cause issues which otherwise would not happen in Australia and New Zealand.
This commonly occurs to a trade mark application that uses a trade mark which contains the name of a specific product and covers goods that extend beyond that specific product. To use an example, if a trade mark contains the word CHERRIES and covers cherries and other fruit products, the CNIPA will consider the trade mark to be misleading to consumers if used on any fruit other than cherries. This ground of objection can be overcome by limiting the specification of goods to only cover cherries.
A more difficult situation is where a trade mark features a generically descriptive word that appears innocuous. To illustrate this point, if a trade mark includes the word GREEN, the trade mark will be considered to be misleading to consumers as it will cause them to believe that products branded with the trade mark are literally coloured green. Unfortunately, this particular objection is in practice insurmountable. The CNIPA is generally very reluctant to reconsider its initial objections unless there are exceptional reasons to do so – e.g. the trade mark applicant can prove that the trade mark has acquired distinctiveness in China.
Conclusion
Clearly, it is very important for trade mark applicants to get everything right at the start before filing their application in China. Doing so will save time and costs the examination process, especially given that applicants are only allowed one opportunity to overcome any objections that are raised outside of the Chinese IP courts.
Should trade mark owners require assistance with any of the above, James & Wells has a dedicated bi-lingual Asia Team which specialises in trade mark prosecution in China and the creation of Chinese names.
