Redefining English words in Chinese to support trademark proceedings

By Steven Andrews and Nancy Qu, Chang Tsi & Partners
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Although English-language ability is rapidly improving in China, many people – including Chinese trademark officials – rely on Chinese definitions of English words. In most cases this is not a problem, but surprisingly often the Chinese version of the English word does not actually mean what the English word really means.

Steven Andrews 铸成律师事务所 外籍顾问、客户经理 Foreign Counsel, Client Manager Chang Tsi & Partners
Steven Andrews
铸成律师事务所
外籍顾问、客户经理
Foreign Counsel, Client Manager
Chang Tsi & Partners

To make matter worse, many online Chinese dictionaries copy from each other, so quickly one inaccurate translation is widely duplicated. This can present a significant problem for trademark owners who attempt to register an English-language trademark in China. We briefly discuss two administrative lawsuits that overcame an adverse official refusal and a review of official refusal decisions because we were able to convince Chinese dictionaries to change the English definitions of our client’s trademarks.

Article 11 of China’s Trademark Law states: “The following signs shall not be registered as trademarks: (1) Those consisting only of generic names, devices or model numbers of the goods concerned; (2) Those consisting only of a direct representation of the quality, primary raw materials, functions, intended purposes, weight, quantity or other characteristics of the goods concerned”.

Official refusal

Even trademarks that have obtained registration in many English-speaking countries may receive an official refusal from the China Trademark Office (CTMO) based on article 11. Successfully registering these trademarks may require redefining or deleting the Chinese definitions of these English trademarks. The legal departments and management of various dictionaries are not always receptive to complaint letters. But strong and repeated follow-ups, including multiple visits in person, made for positive results.

In 1992, XIR solar reflective film was introduced for laminated automotive glass. XIR film reduces the transmission of infrared solar heat and harmful ultraviolet radiation into an automobile. The XIR trademark was applied for in China in 1993, and secured registration for use on automotive glass in class 17. However, more extended protection was sought and in March 2009 an application for XIR was filed on other related goods in class 19, but the CTMO issued a notification on official refusal in May 2011. A review was filed and an unfavourable review of official refusal decision was issued by the Trademark Review and Adjudication Board (TRAB) in November 2012.

The adverse decisions were due to the determinations of the examiners that XIR can be translated as “extreme infrared”. XIR is also a kind of film sandwiched between two layers of glass, which is capable of reflecting infrared radiation and shielding harmful ultraviolet radiation. The CTMO and TRAB decided that the applied mark XIR used on the specified products was a direct representation of the technology and other features of the goods.

Uncommon abbreviation

An application for the trademark “infrared” in China would certainly be refused on goods related to infrared light. Similarly, if the applied for trademark was IR, a common abbreviation of infrared, it would also likely be refused. However, a rejection for XIR based on the fact that it was an uncommon abbreviation for extreme infrared was quite unreasonable when the mark had been used for 20 years and was widely registered in many English-language countries.

屈小春 Nancy Qu 铸成律师事务所 律师、客户经理 Lawyer, Client Manager Chang Tsi & Partners
屈小春
Nancy Qu
铸成律师事务所
律师、客户经理
Lawyer, Client Manager
Chang Tsi & Partners

Examiners at the CTMO and TRAB rely on several online dictionaries for determining the meaning of applied-for marks. Unfortunately for our client, several popular Chinese online dictionaries, including Baidu, Dict.cn, ICIBA, Youdao and Kingsoft Powerword included a definition for XIR of “extreme infrared”. Many online Chinese dictionaries copy from each other, and although the specifics are not clear, a definition that is unknown (or very uncommon) in English had become the standard English definition for XIR in China.

During the course of the administrative litigation, in addition to helping collect substantial evidence of use of the trademark, we communicated with the managers of the dictionaries and were able to persuade them that their translation of XIR was not correct. We obtained the co-operation of Baidu, Dict.cn, ICIBA and Youdao in removing the unfavorable definitions of XIR. What’s more, we provided the court with some popular hard-copy dictionaries that did not include any translation of XIR to further support our case.

In July 2013, the Beijing Intermediate Court No. 1 held that XIR does not have a definite meaning and is therefore not representative of materials or technology, allowing for registration of the XIR trademark. A similar situation occurred in a related case handled by our firm. Everlube was first introduced in 1957 and the Everlube trademark was registered in 1958. The Everlube engineered coatings and dry-film lubricants meet a wide variety of industry and military specifications for part and component performance. Since 2005, Everlube products were manufactured and distributed in China.

Chinese trademark registrations for the Everlube trademark were included in class 2 for products including coatings through international applications filed in 2006. The trademark application was refused by the CTMO and TRAB because many Chinese dictionary definitions included the word Everlube and a translation for it as something having anti-freeze properties. After our firm was successful in obtaining the co-operation of many dictionaries to delete their entries for this word (and our client’s trademark), registration in China was finally possible. In 2011, the Beijing High Court supported the Intermediate Court in overturning the adverse findings by the TRAB and CTMO regarding the application in class 2 for products including coatings.

Unfortunately, the administrative litigation was not successful in overturning a refusal of the Everlube trademark on products including lubricants in Class 4, as the courts agreed with the administrative agencies that Everlube is just made up of two words meaning always and lubricating oil. Therefore, the court reasoned that the trademark is a direct representation of the quality of the designated product and in violation of article 11.

Chinese-language definitions of English-language words can complicate the registration of English trademarks in China. However, complaints and strong follow-up with Chinese dictionaries can result in redefining the problematic Chinese definitions of English words, and ultimately successful trademark registrations.

Steven Andrews is a foreign counsel and client manager, and Nancy Qu is a lawyer and client manager at Chang Tsi & Partners

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