With the growth of China as a major world economy and the rise of global Chinese brands, it has become common for Chinese businesses to register their trade marks in other countries, including New Zealand and Australia.
Given the increasing number of applications to register Chinese character trade marks and transliterated Chinese trade marks at IPONZ and IP Australia, this article will consider some of the issues involved in filing applications to register Chinese trade marks in New Zealand and Australia.
Filing Chinese trade marks
In New Zealand, a trade mark owner is able to file to register a Chinese character mark either as a bare word mark or as an image. Registering a Chinese character mark as an unstylised word mark is the best practice as it achieves the broadest trade mark protection.
In Australia, a trade mark owner is only able to register a Chinese character mark as an image. There is no ability for Chinese character marks to be registered as word marks.
For added protection in both jurisdictions, trade mark owners may choose to file their Chinese character marks as transliterated English marks which are filed in the usual manner as standard word marks.
Chinese trade marks being descriptive
In both New Zealand and Australia, the most common objection raised against Chinese character and transliterated marks during examination is that they are descriptive of the goods/services covered in the application.
For Chinese character marks, this objection will almost always be incorrect because IPONZ and IP Australia trade mark examiners lack proficiency in assessing such marks. In particular trade mark examiners:
- treat a Chinese character mark as if it were a romanised English mark;
- rely on online dictionaries and translators to assess a Chinese character trade mark; and
- claim to be able to understand Chinese consumers even though they themselves do not understand the Chinese language.
What trade mark examiners fail to understand is that Chinese character marks are usually invented words with no defined dictionary meanings. While each individual character in a mark can be said to be descriptive, the entire mark as a whole is at best allusive. The nature of the Chinese language and its use of characters means Chinese character marks rely on a combination of conceptual ideas to convey a combined overall message.
While each case is different, trade mark owners can generally argue against a descriptiveness objection by:
- explaining the meaning of a Chinese character mark in detail and why/how it is not descriptive;
- noting that dictionaries/translating tools are inaccurate and do not reflect the true meaning of the Chinese character mark; and
- showing how Chinese consumers would interpret the trade mark and how they would never construe the Chinese character mark as being descriptive in the way an internet tool suggests.
The situation is more straightforward for transliterated Chinese marks. As they are romanised, transliterated marks will be treated the same as an English language mark. Usually, a transliterated Chinese mark will be deemed to be descriptive because it happens to correspond to a defined dictionary word or to a known geographical location. In such cases no special considerations will apply, and applicants must seek to overcome the descriptiveness objection as they would for a normal English mark.
Chinese trade marks being names of people
If a trade mark owner files a transliterated Chinese mark, trade mark examiners may sometimes raise an objection that the trade mark is the name of a well-known person.
Transliterated Chinese marks are usually rendered as two or three words. Given such marks can come across as being the main name and surname of a person to non-Chinese speakers, it is therefore not surprising that trade mark examiners may interpret transliterated marks as being the name of a Chinese person.
While examiners will usually require a trade mark owner to provide consent from this alleged famous person, this objection can be overcome by:
- stating that the mark is not a name;
- explaining that the mark is an invented word and the conceptual meaning behind it; and
- submitting that there is no famous person whose name is represented by the mark in question.
Chinese trade marks being already registered
As Chinese brands become registered in New Zealand and Australia, trade mark owners may discover during examination that a third party has already filed/registered their trade mark without authorisation. This frequently happens with big franchise brands that are famous in China.
In New Zealand, a trade mark owner is able to remove such an unauthorised third party registration by filing invalidation proceedings through IPONZ. In Australia, a trade mark owner cannot do the same through IP Australia and must file invalidation proceedings against the third party registration through the Federal Court.
It is advised that trade mark owners maintain trade mark watches in New Zealand and Australia to make sure no third parties register their brands without their knowledge.
Conclusion
The issues highlighted in this article are just a few that arise whenever applications are filed to register Chinese marks in New Zealand and Australia. As IPONZ and IP Australia examine increasing numbers of Chinese marks, it is hoped that they will achieve a more consistent and streamlined approach.
In the meantime, should trade mark owners require assistance, James & Wells has a dedicated bi-lingual Asia Team which is experienced in prosecuting Chinese trade mark applications in New Zealand and Australia.
