China is not only an attractive market, it is a necessity for many companies as they grow internationally. But before you begin any business in China's marketplace, you should establish the status of your trademark. Trademark laws have regularly seen change in China. Almost universally the rightful owner of a trademark is the person or entity that registered it first. But this is not always the case in China.

1. © 2001-2016 Globalization Partners International.
All rights reserved. Trade marks are property of their respective owners.
Recent Trademark Actions in China
and Translation of Trademarks:
Tread Carefully

2. Recent Trademark Actions in China and
Translation of Trademarks: Tread Carefully
© Globalization Partners International. All rights reserved.http://blog.globalizationpartners.com/ 2
China is not only an
attractive market, it
is a necessity for
many companies as
they grow
internationally.

3. Recent Trademark Actions in China and
Translation of Trademarks: Tread Carefully
© Globalization Partners International. All rights reserved.http://blog.globalizationpartners.com/ 3
But before you begin any business in China's
marketplace, you should establish the status
of your trademark.

4. Recent Trademark Actions in China and
Translation of Trademarks: Tread Carefully
© Globalization Partners International. All rights reserved.http://blog.globalizationpartners.com/ 4
Trademark laws have regularly
seen change in China. Almost
universally the rightful owner
of a trademark is the person or
entity that registered it first.
But this is not always the case
in China.

5. Recent Trademark Actions in China and
Translation of Trademarks: Tread Carefully
© Globalization Partners International. All rights reserved.http://blog.globalizationpartners.com/ 5
Trademark Translation and Chinese Regulations
When considering your trademark in
China, you must carefully decide if
you plan to translate it into Chinese.
Case in point, just this week New
Balance lost a case and was ordered
to pay the registrant $15.8 million.
Since entering China, New Balance
has used a translated/transliterated
name, Xin Bai Lun, which had
previously been trademarked by a
Chinese citizen. New Balance argued that their use was not a
trademark infringement, but rather, just a translation/transliteration of
their established company name. They lost the case. New Balance did
not put up much of a fight as they just did not take measures to
safeguard how they presented themselves.
Image: Tesla

6. Recent Trademark Actions in China and
Translation of Trademarks: Tread Carefully
© Globalization Partners International. All rights reserved.http://blog.globalizationpartners.com/ 6
In another case last summer, Tesla settled with
the owner of a skin care business that registered
the name before Tesla could do so. The
registrant, Zhan Boasheng, had stated he was
going to use the name for use as a vehicle. Tesla
credited the Chinese authorities with helping to
resolve the case. But it is clear that this person
was squatting on the brand. The terms were not
made public, but there was a deal made.

7. Recent Trademark Actions in China and
Translation of Trademarks: Tread Carefully
© Globalization Partners International. All rights reserved.http://blog.globalizationpartners.com/ 7
In 2012, Apple had a well-publicized trademark
case involving the iPad and had to pay $60
million to settle the issue. Apple had paid the
company to use the iPad trademark for a
number of Asian countries. But, the rights for
China were not clear. In China, they require such
agreements to be clear and as such, Apple lost.
In contrast, a recent ruling allowed Tencent the right to a trademark that was
deemed to be in the public's interest for them to keep rather than the
original registrant, Weixin. They did not judge the original registrant to have
acted in bad faith, but on the basis of public interest, they awarded the
trademark going forward to Tencent, as so many people use their
application.

8. Recent Trademark Actions in China and
Translation of Trademarks: Tread Carefully
© Globalization Partners International. All rights reserved.http://blog.globalizationpartners.com/ 8
If you do feel a person is squatting on a
trademark that you would seek, Chinese law
states that a trademark can be revoked if it
has not been used in three years and anyone
can apply to terminate the trademark. So it
is worth keeping tabs on trademarks that
your business or brand may wish to claim.

9. Recent Trademark Actions in China and
Translation of Trademarks: Tread Carefully
© Globalization Partners International. All rights reserved.http://blog.globalizationpartners.com/ 9
Basic legal practice would dictate to check on any name you plan to use, but in the haste to enter
a new market, sometimes there is a disconnect between marketing, legal, sales, local teams, etc.
In the New Balance case, it was quite costly. Verify your trademark and establish it as the
company standard. Will you use your non-Chinese name? Will you use a transliterated name (one
that sounds similar) or use one in Chinese characters? Whichever you choose, you must adhere
consistently to this standard or you could incur a serious penalty as someone may be legitimately
using that name currently or could be squatting on it and still may cost you.
If this topic interests you may wish to read a book by Lei Mei called, "Conducting Business in
China: An Intellectual Property Perspective." Mr. Mei is managing partner of Mei & Mark in
Washington, D.C.
Globalization Partners International (GPI) works with many companies that are entering China for
the first time and we will inquire how their brand is to be identified whether for website
translation, localized brochures, packaging, technical manuals, user guides, etc. An international
style guide should be developed which addresses such issues that may differ from that of their
home country.
Summary

10. Recent Trademark Actions in China and
Translation of Trademarks: Tread Carefully
© Globalization Partners International. All rights reserved.http://blog.globalizationpartners.com/ 10
Chinese Language and Translation Resources
To further explore issues specific to Chinese translation and Chinese
localization, you may wish to review our previous blogs:
Top 7 Tips for Effective Chinese copywriting
Chinese Translation Services: Simplified versus Traditional Chinese
Chinese Culture and Travel - Part I
Chinese Culture and Travel - Part II
Please feel free to contact GPI at info@globalizationpartners.com with any
questions about our language and technology services. Also let us know if
you have any interesting blog topics you would like us to cover in our
future blogs. You may request a complimentary Translation Quote for
your projects as well.

11. Recent Trademark Actions in China and
Translation of Trademarks: Tread Carefully
© Globalization Partners International. All rights reserved.http://blog.globalizationpartners.com/ 11
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