Trademarks in China and Hong KongChina's legal system is largely a civil law system, reflecting the influence of Continental European legal systems, especially the German civil law system in the 19th and early 20th centuries. In mainland China, the trademark administration is managed by China Trade Mark Office(CTMO)which is division of the State Administration for Industry & Commerce (SAIC). The two main legislation acts forming the trademark system are the Trademark Law, and the Unfair Competition Law.

Two ways of registering trademark are adopted in China: International registration and Domestic registration.
Both options grant protection for China. For the domestic registration in China one should file a trademark registration in the CTMO. The international registration is available trough the World Intellectual Property Organization (WIPO) designating China in the application. The regulation in China divides further the usual 45 classes of goods into subclasses. The subclasses choice should be done very carefully in order to avoid missing protection and subclass ”theft”. The average duration of both procedures of registration is around one year.

Only successfully registered trademarks and service marks are subject to protection in China. There is no common law protection for unregistered trademarks except for the "well-known" marks. In order to evaluate a mark as “well-known” the courts and the administrative bodies take into account the level of knowledge of the trademark by relevant consumers, the length of use of the trademark, the amount of publicity given to the mark in China, and the history of the mark. Since 2001 the Trademark Law allows three-dimensional images and colors to be registered as trademarks. Collective and certification trademarks can be registered in China as well.

For the international registration under the Madrid Protocol, the application for designation China is based either on the trademark application or on the registration. The procedure starts in front of the national trademark office in the country of origin, which forwards the application to the World Intellectual Property Office (WIPO).

For a stronger protection, the applicant could register also Chinese translation of the trademark through a procedure of extra application domestically in China. The particularity of the Chinese market is that many consumers cannot comprehend words written in Latin letters. Chinese consumers will therefore generally refer to foreign brands by reference to Chinese versions. Applying for a trademark with Chinese translation of the brand is highly recommended, because the Chinese language is very different from the other languages and the risk that Chinese people will create characters for the brand (for which there will not be protection against copycats) is extremely important for the brand holder.
For example, Quaker Oatmeal and Ralph Lauren are two well-known brands not having a Chinese translation of their trademarks upon entering in the Chinese market. Thus, the common public has created their own names for the two brands, based on their logos. Quaker Oatmeal got the nickname “Lao Ren Pai” (老人牌) which literally translates to “old man brand”; while Ralph Lauren discovered that their brand was known as “San Jiao Ma” (三脚马) in China, which translates as “three legged horse”.

There are three ways to choose a Chinese trade mark name:

Literal translation
A literal translation works when the trade mark has a distinctive meaning. For example, Apple Computers chose the brand name ‘Ping Guo’ (苹果), which is the Chinese word for ‘apple’. Similarly, Palmolive is known as ‘Zong Lan’ (棕榄), a combination of the exact translation of ‘palm’ and ‘olive’. The disadvantage of this method is that the Chinese characters will sound different from the original trade mark. This means that probably it will take not few marketing time and money to build an association between the Latin and the Chinese character trade mark.

Phonetic translation
The phonetic translation involves creating of Chinese character name that sounds like the trade mark. Pinyin is the official Chinese phonetic alphabet that uses Latin characters which can be used to create the transliteration. For example, McDonald’s is known as ‘Mai Dang Lao’(麦当劳), to local Chinese consumers. Siemens goes by the name of ‘Xi Men Zi’ (西门子), KFC is known as ‘Ken De Ji’ (肯德鸡), and Audi - as ‘Ao Di’ (奥迪). This method is preferable when the trade mark already has a reputation amongst Chinese speaking consumers. However, it is particularly important to pay attention when choosing a phonetic version of your foreign mark because not only the meaning, but also the sound, the tone and even the look of the Chinese characters you choose for your trade mark can affect your brand’s reputation. Considering that there are seven main different dialects the preparation before registering a Chinese trade mark is extremely important.

Combination of literal and phonetic translation
The best trademarks are those that sound the same and also make reference to a defining characteristic of the brand or have a positive meaning in Chinese culture. For example, after considering hundreds of combinations of the four syllables that make up its name Coca-Cola finally approved ‘Ke Kou Ke Le’ (可口可乐), which means ‘taste and be happy’. The German brand Fuchs which in German means ‘fox’ is translated into ‘Fu Si’ (福斯) which translated is ‘good luck and blessing’.

Trademarks in Hong Kong
As to Hong Kong, it still retains the common law system inherited as a former British colony. The trademark law of Hong Kong is based on the Trade Marks Ordinance Cap. 559. The system established by this legislation is entirely separate to the system used in the People's Republic of China which applies the "one country-two systems" policy.
Hong Kong applies broad copyright protection thanks to its open-qualification system. It means that no requirements of nationality or other status of the author or of the work's place of first publication need to be satisfied before a work is eligible for protection. Works transmitted over Internet, radio, televisions are all under protection. Hong Kong is currently unique in the common law world for treating copying infringing materials differently between printed and non-printed materials.

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Sabina Popova

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