If an overseas company is planning to do business in China, particularly like supplying products or services in the Chinese market, trademark filing or registration at the CNIPA for the corresponding Chinese version of its English/Latin word trademark or such in other language （“Non-Chinese”hereafter） is necessary and recommended.

Up to now most overseas companies are quite aware of the importance of registering in advance their Non-Chinese word trademark in China to prevent squatting, however many of them were found having overlooked their brands in Chinese characters, which lead to challenges or problems later to these companies. Here is the summary of the reasons for registering in Chinese characters for the said Non-Chinese word trademarks:

1. Trademarks in Chinese characters are certainly easier for Chinese consumers or relevant public to identify and remember, and thus help spread the marks to the Chinese consumers or public.

2. Filing and registration in advance for the corresponding Chinese version of its Non-Chinese word trademark will prevent those “smart heads” and “quick hands” to squat or imitate to profit from misleading or confusion.

3. Trademarks in Chinese characters can avoid negative/bad nicknames.  

In the practice, if a Non-Chinese brand is widely welcomed by consumers in the Chinese market but difficult for the Chinese people to read, the public may give some “nicknames” according to their pronunciations or compositions in order to remember. However, such “nickname” may have some negative or some elements of ridicule and joking, which would lead to the damage of the brand.

Some previous cases show that Chinese nicknames may be even more popular than the original Non-Chinese brands. Therefore, some squatters may see and seek the opportunity to preemptively register trademarks (including the nicknames) in Chinese characters, which may bring unnecessary trouble to the use and promotion of the original Non-Chinese brands in the Chinese market, such as causing confusion to consumers about the source of the goods, or increasing the risk of using their Chinese nicknames to produce counterfeits. In the follow-up proceedings, the real brand owners have to spend a lot of money and time to protect or defend their rights, examples of such include Google v.s. 谷歌, “Mamma Mia!” v.s. “妈妈咪呀”, and “Jordan” v.s. “乔丹”, to name just a few.  

Coming next, is how shall a Non-Chinese trademark be translated into Chinese? Normally an overseas applicant has three options: translation, transliteration or a combination of both translation and transliteration. The ideal way is to make the translation/transliteration positive and attractive while maintaining a strong connection to the original Non-Chinese language, as the following examples show:

1. Transliteration: 拉菲(LAFITE), 迪士尼(Disney), 西门子(Siemens), 福特(Ford), 亚马逊(Amazon), 奥迪(Audi), 耐克(NIKE), 阿迪达斯(Adidas), 谷歌 (Google).

2. Translation: 步行者(WALKMAN), 空客(Airbus), 脸书(Facebook), 壳牌(Shell), 通用(General Electric), 大众(Volkswagen), 微软(Microsoft), 软银(Softbank).

3. The combination of transliteration and translation: 可口可乐(Coca Cola), 宜家(IKEA), 宝马(BMW), 奔驰(Mercedes-Benz), 保时捷(Porsche), 露华浓(REVLON), 爱马仕(Hermès), 家乐福(Carrefour), 领英(LinkedIn), 联合利华(Unilever), 达美航空(Delta), 百安居(B&Q), 赛百味(Subway).

Before last, the same filing and registration is also recommended in Hong Kong and Macao in addition to the Chinese Mainland, and Taiwan as well, as Chinese are much more commonly used by the people there even if English or Portuguese are also the official languages in Hong Kong and Macao on the one hand, and the exchanges of people and business are much more frequent on the other.