Trials, Translations and Transliterations

In a previous article, we discussed the importance of filing trade mark applications in countries which adopt the first to file system.

In this article, we will touch on the importance of filing a Chinese version of your trade mark in China and other countries in Asia such as Hong Kong, Taiwan, Singapore as illustrated by a recent case where Dell Co Limited was unsuccessful in its action to cancel the registration of a Chinese version of its mark.

In that case, Dell Co Limited had registered the DELL mark in China but had not registered any Chinese translations or transliterations of that mark. In 2001, Dell Co sought cancellation through the Trademark Review and Adjudication Board (TRAB) of a Chinese translation of DELL filed in 1997 by Guangzhou Fo Shan High Tech Co Limited who obtained registration as a trade mark in 1998. TRAB rejected Dell’s application for cancellation finding that Dell had not proved that its mark was well known in 1997. As Dell had not filed a trade mark application, the only way they could win the case was to show that it was well known. The No. 1 Beijing Intermediate Court upheld the decision of the TRAB.

This case serves as a warning to companies to file all possible versions of their mark in China. Once a decision is made to file a Chinese version of the mark, the next consideration is whether to choose a literally translated or a phonetically transliterated trade mark.

TRANSLATION OF A MARK:

One option is to adopt a Chinese character translation of the mark to result in a mark that has some favourable meaning to a Chinese consumer. However, you should ensure that the translation of the mark will not result in a meaning which would have a negative rather than a positive impact on a consumer.

For example, Pepsi attempted to translate its slogan “Come Alive: You’re in the Pepsi Generation into Chinese. Unfortunately, the translation of the mark was “Pepsi brings your ancestors back from the dead” which is not a favourable meaning for the Chinese consumer.

TRANSLITERATION OF A MARK:

Another option is to adopt a transliteration of the mark where you adopt Chinese characters which when pronounced sound like your English version of the mark. Once again, you have to be careful to ensure that the Chinese characters chosen do not result in an absurd meaning or negative connotation with the Chinese consumer. An example of a transliteration of a well known mark is Coca Cola which is transliterated in China to “Ke Ku Ke Le”.

You could also consider a combination of both options where you choose Chinese characters that sound like your mark but at the same time ascribe qualities of your product. However, you should ensure that the marks when translated or transliterated do not have an unfavourable association or even result in a vulgar meaning.

Due to the complexities of coming up with a Chinese version of your mark, we recommend that the advice of a local Chinese trade mark specialist be sought. EKM is able to assist you in this exercise as we work with a wide network of Chinese trade mark specialists who are able to provide the necessary advice.

For further information please contact Ida Pereira at ida.pereira@ekmpatent.com