When a person (or company) decides to extend protection of their Trade Mark to China, we often get asked – ‘should I register the Chinese Characters, or will the English word provide sufficient protection?’
In short, the answer is yes you should consider registering the Chinese Characters, as a registration for the English word/s will not automatically extend to the Chinese translation/s.
Furthermore, as there are multiple ways to translate an English word/s to Chinese (eg you could use the Chinese Characters that are the phonetic equivalent of the English word/s, or the Chinese Characters that are conceptually similar to the English Words) there is a risk that if you do not choose your own Chinese version, the Chinese public may create these for you, which may not appropriately reflect your image.
Another important factor to consider is that Chinese Law does not recognise or protect a trade mark unless it is registered in China (ie China is a ‘first-to-register’ country rather than a ‘first-to-use’ country). Therefore, if you do not register the Chinese version of your mark, there is a risk that a third party will do this before you. Unfortunately, this type of thing does happen quite often and litigation to displace registered rights obtained by another party can be a costly and often ineffective process.
Shoe Company, New Balance Shoes Inc is one company that learnt this lesson the hard way. In brief, New Balance Shoes commenced use of the Chinese Characters 新百倫 (pronounced Xin Bai Lun) in 2003. However, they never registered the mark in China. An unrelated party, Mr Zhou Yuelin, then applied to register these Chinese characters in 2004 and New Balance Shoes opposed the application on the basis of their prior use.
However, as China is a first-to-file country, Mr Zhou Yuelin was considered the true owner of the mark. This lead to New Balance Shoes being unsuccessful in the opposition and Mr Zhou Yuelin’s mark proceeding to registration.
Mr Zhou Yuelin then brought infringement proceedings against New Balance Shoes and was successful. As result of this decision, New Balance was ordered to cease use of the mark, and pay approximately AU$16million in damages, which is the highest damages award made in China to date.
This case signifies the importance of acting early to register your marks in China, including Chinese language versions, if you are planning to trade with China.[This article is intended to provide general information only and the contents should not be relied upon as legal advice for any specific case.]
– Rhiannan Solomon, Registered Trade Marks Attorney, Cullens