Brand protection has always been crucial: it not only reflects the development strategy of the enterprise, but also encapsulates the spirit and characteristics of the brand that consumers will gradually accept and remember.
The first point of brand protection is to carry out brand design. A design that exhibits strong originality and distinctiveness will be able to express the spirit or theme of the brand as a specific name or logo and will be a key element in future advertising and product sales to deepen customer recognition and build a brand effect.
It is, therefore, crucial for foreign brands that are preparing to enter the Chinese market to consider how to translate and protect their brands.
Why have a Chinese brand name for the Chinese market?
Easier identification, recollection and promotion
Compared with other languages, Chinese consumers are more reactive to the Chinese language as it is their mother tongue and is easier for them to identify and pronounce.
Moreover, each Chinese character has its own specific meaning; therefore, regardless of whether the product is targeted at the general public or a certain demographic, consumers will immediately make different associations when they see the Chinese name.
A good Chinese translation can better integrate itself with Chinese culture, resonate with Chinese consumers and promote the brand to increase its popularity and competitiveness in the Chinese market.
Prevent bad nicknames
If a foreign brand does not have a corresponding Chinese brand name in the Chinese market and consumers find it difficult to pronounce, or if a foreign brand is popular in the Chinese market but does not have a Chinese name, consumers may proactively give the brand a nickname that they think is fun according to the foreign language pronunciation or the composition of the foreign brand name.
However, the nickname may have a negative meaning or elements of ridicule and humour, which may damage the brand image. For example, Facebook encountered such problems in the past when it did not have an official Chinese name: some Chinese netizens gave it the name ‘非死不可’, which translates to ‘you have to die’.
Consequently, upon entering the Chinese market, it is important for foreign enterprises to establish catchy, sensible and interesting Chinese names for their brands that are consistent with the enterprise’s culture and value to guide consumers towards having a positive impression of the brand.
Early registration to avoid pre-emption, confusion and misunderstanding
If you don’t register, someone may register for you.
The Chinese market is so large that the names consumers spontaneously choose out of their love for a brand’s products may be more popular than the original foreign brands; therefore, some people will see a business opportunity to ‘help’ enterprise’s register their Chinese brand name, whereas others will maliciously translate foreign brand names and register those names.
There is a possibility that when the owner of a foreign brand name finds that a Chinese brand name is needed, all possible Chinese names have been registered by others. In that case, it may be difficult to revoke those Chinese names through legal measures, and the only option available may be to buy the Chinese brand name at a high price.
If someone else registers and uses a brand nickname that is widely loved by consumers on similar goods, it is likely to bring unnecessary trouble to the use and publicity of the original brand. This includes confusion and misunderstanding of the source of the product by consumers, which may result in market shrinkage, damage to the reputation and image of the brand, and increased risk of use of the Chinese nickname to manufacture fake and inferior products.
In the subsequent process to safeguard their rights, the real brand owners may have to invest a lot of time and money to protect their rights.
Requirement for import goods
When import goods are declared at Customs, they must indicate the product name, factory name and address in Chinese. Some commodities (eg, food, cosmetics, auto parts and clothing) require both the Chinese product name and the Chinese brand name.
At the same time, according to Chinese product quality law, imported products must have a Chinese brand name when they are sold on the market; therefore, having a Chinese name for the foreign brand is a necessary condition for entering and selling products in the Chinese market.
Translating the brand name
Translation methods of foreign brands
Generally speaking, there are several methods of translating foreign brand names into Chinese.
Transliteration refers to choosing corresponding Chinese homonyms to directly express the brand name in accordance with the foreign language pronunciation. Regardless of whether the brand has a specific meaning, transliteration is the most direct translation method. Some examples are 迪士尼 (pronounced ‘Di Shi Ni’, which is the Chinese transliteration of Disney), 西门子 (pronounced ‘Xi Men Zi’, Siemens), 福特 (pronounced ‘Fu Te’, Ford) and 奥迪 (pronounced as ‘Ao Di’, Audi).
Free translation is based on the actual meaning of the foreign language without consideration of the foreign language pronunciation. The most faithful translation will be that of a brand name that is a word with a specific meaning. Examples include 脸书 (a free translation of Facebook, where ‘脸’ means ‘face’ and ‘书’ means ‘book’), 壳牌 (a free translation of Shell, where ‘壳’ means ‘shell’ and ‘牌’ means ‘brand’) and 微软 (a Chinese free translation of Microsoft, where’微’ means ‘micro’ and ‘软’ means ‘soft’).
Mixed translation (ie, half transliteration and half free translation) is a translation that takes into account both the foreign pronunciation and the meaning of the foreign brand name. The most typical example is 星巴克, which is a mixed translation of Starbucks: the first Chinese character ‘星’ is a free translation of ‘star’, and ‘巴克’, pronounced ‘Ba Ke’, is a transliteration of ‘bucks’.
There are also random translations that do not follow a general rule, such as 汇丰 (the Chinese brand name of HSBC) and 花旗 (the Chinese brand name of Citi), and some brands have no translation at all, preferring to just use the foreign language name (eg, IBM, BBC, 3M and AMD).
What is a good translation or transliteration?
Good translation is both an art and a science. The artistic aspect of translation mainly refers to the translation not only having a faithful sound, meaning, spirit and form, but also making a finishing point that allows the name and product to be integrated in and be interacted with in the market to generate huge brand value, providing a driving force for the brand’s longevity.
The translation can also have a highly artistic conception and a poetic meaning, feeling and style.
Typical examples of good translations are:
可口可乐 (Coca Cola) – the Chinese name not only sounds similar to its English name Coca Cola (‘Ke Kou Ke Le’) but also contains a description of the product taste and the attributes that bring joy. This is a function that is completely absent from the original name.
家乐福 (Chinese name of Carrefour) – the Chinese name not only conforms to the pronunciation of Carrefour (‘Jia Le Fu’) but also implies the meaning of ‘a family being very happy when shopping in the supermarket’. Consumers can understand this immediately.
Although the artistic aspect of translation is important, the scientific aspect of translation may be even more crucial. Science in this context refers to the fact that the translation should comply with the provisions of the law, especially the provisions of trademark law and other relevant laws; otherwise, it cannot be registered or enjoy the exclusive trademark right.
Under the provisions of Chinese trademark law, it would be difficult to register a trademark that:
is the same or similar to specific signs and symbols, including the official name, flag, emblem, anthem, etc, of China or another country; the name, flag, emblem, etc, of an international intergovernmental organisation; official marks and inspection marks that indicate the implementation of control and assurance; and the names and symbols of the red cross and the red crescent;
damage public order, good customs and other public interests, including signs exhibiting racial discrimination, signs that are deceptive and that may easily lead to public misunderstanding of the quality or origin of the commodities, signs that harm socialist morals and signs bearing other negative effects;
lacks distinctiveness; bears only the general name, figure and model of the commodity; only directly describes the function, raw materials and other characteristics of the commodity; or is too complex or too simple; and
is the same or similar to trademarks that have been applied for or that have been registered earlier for the same or similar goods.
According to online reports, 95% of the Chinese brand names of foreign brands entering China are transliterated. There is a reason for this: transliterated brand names are generated according to the pronunciation of the foreign brand name. Many different Chinese characters correspond to the pinyin of one Chinese character, and if different tones are added, there are even more Chinese characters.
Consequently, several combinations of Chinese characters can be used to transliterate a foreign brand name. Although the resulting name will essentially have no overall meaning, it will be highly original and will have a strong and inherently distinctive character if it is used as a brand name; therefore, there is a low chance that it will encounter a situation in which it cannot be used and registered.
Many factors should be considered when choosing the most appropriate combination of Chinese characters, including:
the meaning of each Chinese character – the meaning should be good, sensible and positive. On this basis, foreign enterprises should consider whether the meaning is compatible with the brand connotation or spirit;
the length of the name – generally two to three Chinese characters are preferred;
the overall appearance of the name – overall, the characters should be harmonious and aesthetically pleasing. It is advisable to avoid using certain rarely used Chinese characters or Chinese characters with a complex structure as those characters will affect consumers’ reading comprehension and memorisation; and
how catchy the brand name is.
Protecting the brand
Register the Chinese brand name
Obtaining the exclusive trademark right in China essentially relies on registration; therefore, the brand owner should immediately apply to register the Chinese name of the foreign brand after deciding on the Chinese translation to prevent the occurrence of malicious pre-emptive registration and safeguard its own legitimate rights and interests.
To expand the field and scope of protection of the Chinese name, the brand owner can:
separately register the Chinese name as a trademark;
merge the Chinese name with the foreign language name;
merge the Chinese name with the company logo; or
merge the Chinese and foreign language names with the logo.
In addition, the Chinese name should be registered on not only the core goods or services but also the goods or services that are closely related to the core goods or services.
Use the Chinese and foreign brand names together
When assessing trademark similarity, the similarity of the sound, appearance and meaning of the trademark is a core element of the assessment. Although the foreign language brand name and the Chinese transliteration may have the same or similar pronunciations, they may have different meanings and appearances. In that case, they will not be recognised as similar trademarks.
However, if the Chinese and foreign language brand names have formed a ‘stable correspondence’ after long-term use, they will be recognised as similar trademarks.
Stable correspondence refers to a relationship between the Chinese name and the foreign language name that has been formed in the general cognition of the relevant demographic in China.
In cases of trademark authorisation, the logic for the assessment is not to directly compare the Chinese mark in dispute with the cited foreign mark, but to compare the Chinese mark with the foreign mark after assessing whether the Chinese and foreign marks claimed by the opponent form a correspondent relationship.
In the 迪奥皮 (DIOR Leather) trademark opposition case, the goods identified by the opposed trademark include schoolbags and backpacks. The DIOR trademark cited by Christian Dior Couture identified ‘handbags’ as the designated goods, and the ‘迪奥’ (DIOR in Chinese characters) trademark cited ‘whips’ as the designated goods.
Although the opposed trademark’s goods are similar to those identified by the cited trademark DIOR, the opposed trademark and the cited trademark DIOR were not recognised as similar trademarks. The opposed trademark is similar to the cited trademark 迪奥, but the goods of the trademarks are not similar.
The opponent proved that after long-term publicity and use, the opponent’s trademark DIOR and the Chinese transliteration 迪奥 have formed a stable correspondent relationship.
The Trademark Office held that when the opposed trademark and the cited trademark 迪奥 are used together, it is easy for consumers to mistakenly believe that the opposed trademark is related to the opponent, resulting in confusion and misunderstanding; therefore, it was decided that the opposed trademark should not be registered.
It is particularly important to use foreign language and Chinese brand names together to form a stable correspondent relationship between them.
Retain evidence of use
Confusion usually refers to the use of two brands on the same or similar goods or services that subsequently misleads the relevant demographic in respect of the source of the goods or services.
In determining the possibility of confusion, the distinctiveness and the popularity of the former brand should be considered; therefore, it is particularly important to retain evidence of use to prove the popularity of the Chinese brand.
The use of a brand refers to the use of a trademark on commodities, commodity packages or containers and commodity trading documents, or the use of a brand in advertising, exhibitions and other commercial activities to identify the source of commodities.
Evidence reflecting the sale and promotion of the commodities bearing the trademark should, therefore, be kept, including agreements, invoices, bills, customs declarations, packaging, advertisement pictures and billboards.
Standardise use and prevent improper use of trademarks
A generic trademark refers to a case in which a registered brand that originally had distinctive characteristics is gradually weakened as it is used in the market to the extent that it loses the function of distinguishing the source of goods or services and eventually degenerates into the common name of specific goods or services, which cannot be used exclusively by the trademark registrant in the public domain. For example, the brands ‘heroin’ (for morphine) and ‘aspirin’ (for acetylsalicylic acid) of Bayer, a German pharmaceutical giant, have degenerated into the common names of narcotics and analgesics respectively.
Improper use of the brand by its owner in the process can easily result in the brand name becoming a generic trademark if the brand owner does not distinguish between the brand and the product name in the process of use.
Examples of improper use include cases in which the brand owner directly marks the brand on the product package without clearly connecting the name to the product, directly refers to the product using the brand name, or nominalises or verbalises the brand name in publicity and promotion.
Improper use in the long term may lead to consumers and relevant operators using the brand name to refer to goods in general, not just those of the brand name, resulting in the degradation of brand distinctiveness.
It is, therefore, crucial to standardise the use and prevent the improper use of the brand name to prevent the degradation of the brand name and prevent it from becoming a generic trademark.