For brand managers, deciding upon a trademark strategy for Asia is a challenging process, and nowhere more so than when dealing with Chinese-speaking countries and territories. Different regions within Mainland China, as well as Hong Kong, Macau and Taiwan, for example, all have their own cultures, traditions and dialects, as do the significant Chinese-speaking populations in countries such as Singapore and Malaysia.

As a result, each uses the Chinese language in a variety of different ways and there are a host of nuances, such that the smallest variations between written characters or phonetic tones can utterly change meanings.

This presents a range of logistical hurdles. With 1.3 billion consumers alone, China is the largest importer and second-largest exporter in the world. A misfiring trademark strategy in such a massive market for fast-moving consumer goods can be an expensive burden for any firm seeking to do business there.

Cache of confusion

A trademark owner must be aware of the subtleties within the Chinese language. They are present in:
i) Form – variations of many similar characters;
ii) Sound – similar syllables, tonal differences and regional dialects, and
iii) Meaning – differences between ‘archaic’, ‘traditional’ and ‘simplified’ Chinese scripts.

These three cornerstones of the Chinese language provide infringers with unusually broad latitude for passing off, or launching products with confusingly similar names. By tampering with elements of form, sound and meaning, infringers can bend the language to suit their own purposes.

In the Chinese-speaking markets, infringing marks could:

• By form – differ from the true brand’s Chinese characters only by a matter of two or three strokes

• By sound – employ phonetically similar syllables to those of the legitimate brand in order to give a misleading impression of where goods or services have originated

• By meaning – draw from different Chinese scripts in order to produce the same meaning conveyed by the legitimate brand

Written characters – the keys to form and meaning – make fertile ground for deception. While there are 3,000 Chinese characters in common use, up to 100,000 are available across the three scripts. ‘Archaic’ characters are little used, but still emerge from time to time. ‘Traditional’ characters are popular in Hong Kong, Taiwan and Macau; but ‘simplified’ remains the script of choice for the bulk of China, Singapore and Malaysia.

The Chinese-speaking peoples have sought to reduce this complexity through phonetic shortening – a form of casual speech – and local equivalents that fit in with some 26,000 regional dialects. But the true effect of these formulations is to add strings of new variants to an already crowded field.

What all this amounts to is a rich cache of potentially confusing signs and sounds that is ripe for exploitation by infringers.

Prime deterrents

Washington, DC-based lawyer Barbara L Waite of BL Waite PC took part in a recent webinar on Chinese-language trademarks held by leading IP and legal services provider CPA Global. Waite told NewLegal Review that, in her experience, the linguistic hurdles of registering trademarks in Asia are compounded by administrative ones. This is exemplified most strongly in the largest territory, China.

‘The challenges are twofold, but result in similar problems,’ she said. ‘The first is prosecuting applications before China’s trademarks office. They examine with a rigidity and simplicity that can be very frustrating to US practitioners and businesses. For example, although the international classification system is supposed to be merely an administrative convenience for trademark offices, in China, it is used as a substantive means of distinguishing between trademarks.’

As such, Waite added, ‘The exact same trademark can be registered by a different person in each class. And, even though applications are not terribly expensive to prosecute there, convincing a client to register in all 45 classes is tough. Even if you succeed in achieving those registrations, they are subject to challenge for non-use every three years’.

The second challenge, said Waite, is deciding which mark forms should be pursued. ‘Faced with such a plethora of choices, and the related expense – especially when combined with the examination problems already mentioned – most US businesses throw up their hands and insist on pursuing the English-language mark alone,’ she said.

This course of action, according to Waite, produces its own prime deterrents. ‘Actual examples of unintended consequences that can arise from insisting upon using only English-language marks in China can change a client's mind,’ she said. ‘I have often used the example of Marlboro cigarettes becoming ‘cowboy’ cigarettes. I also like that of Quaker Oats becoming ‘old man’ cereal. Sometimes, a business consultant – an “old China hand” with corporate experience – can help lawyers to persuade their clients to take a broader approach. I also recommend watch services for monitoring marks, but the question of what you watch must be carefully addressed.’

Waite sees striking similarities between China’s abundant mark options and the proliferation of marks in the domain name system – in particular, both fields require a discerning approach. ‘Any business entering China’s market,’ she said, ‘is simply going to have to decide where to prioritise its protection and enforcement efforts.

’Businesses generally develop a pretty good “gut feeling” for what they would most object to from someone else's attention to their mark – whether that is actively using a similar mark, merely registering a similar mark, or doing both with respect to a domain name. The bottom line, of course, is whether the offensive activity will actually lead to lost sales and/or lost goodwill for the brand.’

Success through clarity

Despite the challenges involved, there are some basic, front-line strategies that brand owners can deploy in Asia, in order to achieve successful results. Mark infringement in Asia typically occurs through translation, where the literal meaning of an original mark is carried to its imitator, or transliteration, where a similar phonetic sound is achieved with different characters. As such, achieving a definitive, Chinese-language version of a mark from the start can be a great asset. CPA Global Trademark Monitoring Specialist Jeevan Retnam, who hosted the webinar, provided a useful guiding rule for this: ‘If you cannot say what you mean,’ he said, ‘you can never really mean what you say.’

Jeevan highlighted some recent successes in the consumer goods market, including the Chinese-language version of Flower Fairies, registered for a toy range. This mark was presented in such a way that it preserved the full meaning of the English-language version. Pampers’ conversion into ‘help baby feel comfortable’ does not literally translate the phrase ‘to pamper’, but captures the nature of the relevant product. Meanwhile, Nikon’s conversion to ‘ni kang’ takes the opposite route: the Chinese-language version has no meaning at all, but captures the original’s distinctive sound.

All great trademarks are original, distinctive and catchy, and in Asia the most successful ones tend to be short and memorable sound bites of two or three syllables. Coral Toh, webinar panellist and managing director of Hong Kong and Beijing-based IP law firm Ella Cheong, advised every business entering the Asian market to create a ‘name bank’ for each relevant mark. This will contain as many permutations as possible of the variant symbols, sounds and meanings that could be deployed by infringers.

This step will help companies to approach their Asian registration and enforcement efforts pragmatically. Managing every permutation while keeping a balanced budget, said Toh, will be almost impossible – particularly for larger ventures. So once a business has settled on its core marks, it should:

• Extrapolate a series of key permutations, the size of which will depend upon budgetary scope

• Decide which permutations to register and which ones to place on a trademarks watch list arranged by a search company

• Monitor other people’s attempts to register those permutations, while allowing enough time to file oppositions.

For more on this subject, watch the CPA Global webinar here.


To find out about CPA Global’s TMDS watch service, click here.


For details of upcoming CPA Global trademarks webinars, click here.