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Trade Mark Lost in Translation

Written by Andrew Nicholson, Partner

An increasing number of Australian businesses are moving with the global economy and doing business offshore.  For some, that involves seeking a greater presence in the Chinese market. One of the first issues to consider when moving into another market is how your business is to be positioned or promoted, whether it relies on any technology and whether it is necessary to secure any intellectual property rights.

As a starting point trade mark protection might not be on top of your to-do list, but it is crucial to take steps to address this issue at an early stage because the rules in China are not the same as in Australia. China uses the “first-to-file” system, meaning that you may not be able to obtain, or indeed you may lose, legal protection if you trade mark a similar mark that has already been registered by someone else.  Therefore, it is essential to register your trade marks in China before entering into the market to diminish the risk of the trade mark being ‘hijacked’. We’ve previously commented on cases involving New Balance and Penfolds, who have been lucky enough to win the battle to get their ideal Chinese translations back before a Chinese court, but only after some time and at considerable expense (the article can be found here: New Balance sets new record in China).

As with all non-English speaking countries, it is always good practice to consider whether it is necessary to register a Chinese version of a foreign trade mark which is very likely to be adopted by local consumers either by way of translation or by transliteration. Consideration should also be given to the connotation or image that the foreign company would wish to convey when translating their English mark into Chinese. When registering in China, the registration of a trade mark in Roman characters does not automatically protect the trade mark against its registration of the same or similar trade mark written in Chinese.

Choosing a Chinese trade mark equivalent is particularly important because not only the meaning, but also the sound, tone and even look of the Chinese characters are relevant. A poor choice of a Chinese brand can have an adverse effect on reputation.

For example, Quaker Oatmeal gained the nickname “Lao Ren Pai”(老人牌) which literally translates to “old man brand”; while the German beer brand Warsteiner used the Chinese name “Wo Si Le”(沃斯乐) the pronunciation of which is similar to “I am dead”(我死了) in Chinese.

There are several ways to choose a Chinese trade mark name, including:

(1) Create a literal translation

A literal translation works when the trade mark has a distinctive meaning. For example, Apple Computers chose the brand name “Ping Guo”(苹果), which is Chinese for ‘Apple’. The disadvantage of this method is the Chinese characters will sound different from the original trade mark. This means that time and money may need to be spent on building the association between the Roman character trade mark and the Chinese character trade mark.

(2) Create a phonetic translation

A phonetic translation involves creating a Chinese character name that sounds like the trade mark. Pinyin is a system that uses the Latin alphabet to represent Mandarin Chinese sounds , which can be used to create the transliteration. For example, ‘Chanel’ is known as “Xiang Nai Er”(香奈儿) which is similar to its French pronunciation. “Audi” is known as “Ao Di”(奥迪). This method is preferable when the trade mark already has a reputation amongst Chinese speaking consumers although those marks have French and German provenance, but the principle is the same.

(3) Combine a literal and phonetic translation

Arguably the best trade marks are those that sound the same and also make reference to a defining characteristic of the brand or have a positive meaning in Chinese culture. For example “IKEA” settled with “Yi Jia”( 宜家), which means “comfortable home”. Another example is Coca-Cola which translates to “Ke Kou Ke Le”(可口可乐), meaning “tasty and happy”.

We can assist not only with the protection of your IP rights, but also with undertaking due diligence in relation to the existence of competing brands and marks in China, as well as with language skills and the choice of suitable Chinese translation for your mark/s.

Some key takeaway messages are:

  • Know the market and appreciate that the rules in relation to the protection of your legal rights may be very different offshore.
  • Get advice early, as the different rules may mean that you miss out if you don’t act.
  • Take steps to secure intellectual property rights, including by registering key trade marks prior to engaging in the Chinese market, including by dealing with local manufacturers/agents;
  • Think about the Chinese translation of your trade mark carefully and obtain advice to ensure your brand name does not get lost in translation.

"The content of this publication is for reference purposes only. It is current at the date of publication. This content does not constitute legal advice and should not be relied upon as such. Legal advice about your specific circumstances should always be obtained before taking any action based on this publication."