Trademark similarity is the most common reason for trademarks to be denied registration. This is true in both China and the U.S. And guess what, your trademark could be considered similar to one in a different language, including Chinese.
If the meaning of a Chinese trademark and an English (or other non-Chinese) trademark is the same, China National Intellectual Property Administration (CNIPA) trademark examiners are directed to find that trademark similarity exists. One example given in the CNIPA examination guidelines to illustrate this are the marks 红&黑 and ROUGE ET NOIR. The meaning of both is “red and black”.
On the other hand, if the meaning of the marks is different, the fact that they may sound alike does not give rise to trademark similarity. An example given in the examination guidelines is the marks 福达 and FUDA. In pinyin, China’s official romanization system, 福达 is transliterated as fuda. However, in cases like this, the CNIPA examination guidelines provide that no trademark similarity exists.
Understanding Linguistic Nuances and Pronunciation
At first glance, this might seem like a recipe for confusion, with two registered marks having the same pronunciation. But do they really? Grasping these linguistic nuances is vital; trademarks that sound similar might confuse consumers, diluting a brand’s distinctiveness and potentially leading to lost sales or legal disputes. Understanding how pronunciation varies across different dialects can help brands strategically choose names that stand out clearly in their target markets.
Mandarin, China’s official language, has a standard pronunciation and transliteration into the Latin alphabet. But there are millions of people in China who do not speak Mandarin, and hundreds of millions that speak both Mandarin and one or more other Chinese languages, such as Cantonese. The mark HOLOK would not sound like anything recognizable to a Mandarin-speaker, but for the more than 100 million Cantonese-speakers it would sound like 可乐, which is slang for Coca-Cola. By contrast, the Mandarin pronunciation of 可乐 is generally transliterated as kele.
This approach is generally consistent with the American one. USPTO will not consider FUDA and 福达 to be confusingly similar, even though it might consider FUDA to be confusingly similar to FOODA. However, USPTO does require an application for a mark in Chinese (or other non-Latin script) to identify the meaning of the mark. Under the doctrine of foreign equivalents, likelihood of confusion can exist between an English-language mark and a non-English one whose meanings are similar. Cases cited by USPTO in its Trademark Manual of Examining Procedure (TMEP) include In re Am. Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987), which found the trademark similarity existed between BUENOS DIAS and GOOD MORNING. In another case, In re Hub Distrib., Inc., 218 USPQ 284 (TTAB 1983), it was held that EL SOL and SUN are confusingly similar.
Strategizing for the Chinese Market
When crafting a China trademark strategy, brands need to consider whether their foreign-language trademarks have a similar meaning to a registered trademark (or one for which a registration application is pending) in Chinese. Chinese marks that merely sound like theirs, however, are unlikely to present a problem.
Trademarks are the heart of a brand’s identity, and understanding how trademarks work across different countries, like China and the U.S., is crucial. For businesses aiming to make a global impact, protecting that identity through smart trademark strategies is a must. Always remember: a strong brand is a protected brand.
Brands looking to enter and thrive in the Chinese market should do the following to evaluate Chinese and English language trademarks:
- Consult bilingual trademark attorneys who understand linguistic and legal nuances. Subtle but critical issues can emerge in translating and transliterating between writing systems. Experts can spot potential red flags upfront.
- Do comprehensive trademark searches in both English and Chinese.
- Develop your Chinese trademarks purposefully, not just via translation. Moving beyond direct translation allows customization of strong Chinese marks that embody your brand’s essence while minimizing conflict with existing marks.
By following these best practices, you can craft your Chinese brand identities and trademarks to maximize enforceability and brand protection in a cross-linguistic legal environment.