Is your famous foreign brand just another mark lost in translation?

By Fabio Giacopello, HFG
0
1053

Afew recent cases have brought interest to bear on trademark portfolio strategy for foreign brands in China. Attention should be paid in the acquisition of trademarks in Chinese characters. Marketing managers may suggest emphasising the foreign origin of products by using the foreign-character trademark, but the registration of the trademark in Chinese characters is of the utmost importance, to prevent others from registering it.

Johnnie Walker or John walks?

On 23 November 2011, Beijing Intermediate People’s Court backed a decision from the Trademark Review and Adjudication Board (TRAB) that rejected the claim of Diageo Brands (Diageo) for cancellation of the trademark 约翰走路 (Yue Han Zou Lu in Chinese characters, which means “John walks”) under class 30, which covers chewing gum, cocoa products, rice pudding, oatmeal, etc.

Fabio Giacopello Partner HFG
Fabio Giacopello
Partner
HFG

Fujian Jinjiang Shenglong Food (Shenglong) applied for the registration of this trademark in class 30 on 29 September, 2001. Diageo claimed that Yue Han Zou Lu is similar with its trademark “Johnnie Walker”, used for its famous scotch whisky, since its meaning is almost identical. The TRAB and the court found Diageo did not prove that before 2001 Johnnie Walker was so well known that it could obtain protection against a possible translation in a different class. Diageo has owned the registered name of “Johnnie Walker” (尊尼获加 or Zun Ni Huo Jia in Chinese) since the early 1990s.

It is worth mentioning that 约翰走路, or Yue Han Zou Lu, in class 33 is not registered by anyone. It results from an application filed by an individual, which is currently under opposition.

Hermès loses battle

Recently the First Intermediate People’s Court in Beijing confirmed the ruling of the TRAB, which rejected the request of cancellation of the trademark”爱玛仕” (Ai Ma Shi) in class 25. This trademark was filed in 1995 by Dafeng Garment Company in Guangdong and is pretty similar to “爱马仕” (Ai Ma Shi), or Hermès in Chinese.

The public database of the Trademark Office reports that the French fashion company filed the trademark in Latin characters in 1977 in China, while the trademark in Chinese was filed only in 1996, a year after爱玛仕 (Ai Ma Shi) from Dafeng Garment.

The court held that most of the evidence submitted by Hermès was not relevant, since it pertained to a date after the Dafeng trademark. The court also found insufficient evidence to prove that Hermès’ unregistered trademark was familiar to consumers on the mainland at the time.

Relevant regulation

According to Article 13 of the Chinese Trademark Law: “A trademark which is applied for registration in identical or similar goods shall not be registered or shall be prohibited from using, if it is a reproduction, an imitation or a translation, liable to create confusion, of a well known mark which is not registered in China. A trademark which is applied for use in not-identical or dissimilar goods shall not be registered or shall be prohibited from using if it is a reproduction, an imitation or a translation, misleading the public, of a well known mark which is registered in China, provided that the interests of the owner of the well known mark are likely to be damaged by such use.”

Reading the article above mentioned we learn that:

  • The translation of non-registered trademarks is protected only if the trademark in Latin characters is well known, and only for the goods/class for which it is famous;
  • Having a registered trademark in Latin characters can prevent others from registering the translation in the same class, and if the trademark is well-known, in different classes.

From the cases mentioned above we understand that such protection seems limited, since an imitation of the translation may not be regarded as similar. Therefore to widen protection against similar trademarks in Chinese it is wise to have the trademark registered in Chinese characters.

Translating a trademark

Three methods may be adopted when translating a foreign trademark into Chinese language:

  • Transliterating the sound: a character combination is selected for the trademark that is pronounced similarly to the original mark. Generally, the character combination does not have a true meaning;
  • Translating the meaning: the character combination has a certain meaning, but the pronunciation does not sound similar to the original foreign word;
  • Combining sound, similar to the original foreign word, and meaning.

Things to avoid

Negative or wrong meaning: sometimes the translation provided has some hidden negative meaning. Before deciding to adopt a trademark, it is advisable to make a public survey to check if any contrary indication arises.

Too lengthy: often, especially when the translation of the foreign trademark is done by transliterating the sound, the result is a trademark that is too long. An example could be “Salvatore Ferragamo”, or 赛尔瓦托菲拉格慕 in Chinese (Pinyin: Sai Er Wa Tuo Fei La Ge Mu).

Consider registering Pinyin

A translation or transliteration of a foreign trademark in Chinese characters can be reversed in the Latin alphabet. This is called Pinyin. Generally, the Pinyin is not used by trademark owners, probably because it’s not so appealing. However, the Pinyin of a well known trademark is often used in domain names by counterfeiters. So it is advisable to register the Pinyin translation to have a better chance of protecting against copiers.

Simplified v traditional

Simplified Chinese characters are used in Mainland China, while traditional characters are used in Hong Kong and Taiwan. It is probably better to have simplified characters registered in China, and traditional characters in Hong Kong and Taiwan.

Fabio Giacopello is a partner at the Shanghai office of HFG

(HFG)

上海武定路969号

华祺大厦14层

14/F, Hua Qi Building

No. 969 Wuding Road, Shanghai

邮编Postal code: 200040

电话Tel: +86 21 5213 5500

传真Fax: +86 21 5213 0895

www.hfgip.com

电子信箱E-mail:

Giacopello@hfgip.com