The Five Things You Need To Know To Protect Your Trademark In China

 Fact #1: Every luxury goods manufacturer wants to enter China.

Fact #2: Every luxury goods manufacturer is fiercely protective of its brand name

Fact #3: Companies are in danger of losing their brand name if they fail to register the proper Chinese version of its name.

Fact #4: Hermès has lost its name to a China-based clothing manufacturer

Fact #5: Chivas Regal lost its name as well to another China-based clothing manufacturer

According to Women’s Wear Daily, Hermès lost its appeal to the China Trademark Appeal Board in February. According to state media, Hermès failed in its attempt to register the Chinese version of its name, Ai Ma Shi in pinyin, because a Chinese company, the Dafeng Garment Co. of Guangdong, had already done so. Apparently, Chinese speakers refer to Hermès by that name and Hermès argued that therefore they should be allowed to register it, but the trademark board disagreed. These two cases are bringing to light the growing intricacies of branding in the Chinese market.

Here are the five things you need to know to protect your brand name:

1. Speak and Write Mandarin and/or assemble a team of Mandarin-speaking confidantes who understand your brand. These people can help you evaluate the various options.

2. Literal may not be the most beautiful. Most foreign companies try to translate their brand literally. This may not be the best approach. One of my clients submitted a literal translation to my panel of experts. They quickly vetoed the name because it was 1) hard to pronounce and 2) sounded to “Chinesey.”

3. Try to make it sound as if it was born in the U.S.A. or Europe. Chinese naturally hate anything made in China. Again, your expert panel can help you with this. According to my expert panel, “Anything made inside China = bad; Anything made in the U.S. or Europe = good.”

4. If you have time, it may be worthwhile for you to submit your name choices to a small focus group in mainland China and Hong Kong.

5. Make sure your brand name is well known in China.  WWD reports that the Beijing No. 1 Intermediate People’s Court agreed with the ruling of the State Administration for Industry & Commerce’s Trademark Appeal Board. Both courts agreed that the Wenzhou garment maker could register its trademark application for the words “Chivas Regal,” the Scotch whiskey maker, on their clothing, shoes and hats. In particular, the court noted that the brand was being used on products different than whiskey, in a different market. In addition, the court said that Chivas Bros. did not successfully make its brand name “well-known” in China as of 2003, which was when the Chinese clothing maker first applied for the trademark.