The notion that being there first somehow justifies ownership rights is a venerable and persistent one.” –Lawrence C. Becker, Property Rights: Philosophical Foundations (1977).
Generally there are six requirements that the client must provide to the firm:
- English text of the trademark
- Chinese text (characters) of the trademark
- Copy of the passport, if applicant is individual or copy of certification of incorporation
- Name and address of the applicant
- The items the trademark applies to
The first step is avoiding the mistake of submitting your logo in color. Although you may have a graphic with a very distinct hue, you must send the firm a digital copy in black and white only. If you submit an application in a certain color, your right is limited to that single color. Although others cannot register your image in another color, there is no express bar on the use of a different color. In other words, if you apply for red you can’t stop others from using pink or fuchsia, etc.
Trademarks in China: English text
Essentially there are three ways different methods of “Romanizing” your trademark’s text. Most importantly you will need to register the plain English label. However, if you are marketing a Chinese product that does not have a direct English translation, you should to register its pinyin transliteration. In case you are not familiar, Pinyin is the official Chinese system using the Latin alphabet for denoting the sounds of words. Basically it entails transcribing the pronunciation into phonics into a format so that 广州市becomes “Guangzhou.” The last and least important method concerns the Wade-Giles system. Pinyin has effectively superseded Wade-Giles. It is important to make mention of it because you will see various products today still using the Wade-Giles system (e.g., T’sing Tao).
Trademarks in China: Chinese text (characters)
If you continue selling your product in China (sooner or later) you should register your trademark in Chinese as well. Chinese consumers will remember the products in Chinese characters. Too many times have I purchased the wrong flavor of noodles, mistaking Spicy Beef for Seaweed. As a result, I always go with chicken because it is the only character I can remember—point well illustrated I hope. (For another example, consider the dilemma Hermes faced when the company did not register its transliteration in Chinese)
Although there are myriad dialects of Chinese, the most standard pronunciation is Mandarin. Mandarin uses the pronunciation in Bei Jing as standard. But technically all written Chinese characters are nearly the same. I say nearly because in some dialects there are minor special characters to be aware of, such as in Cantonese. The bottom line is that you should register the Mandarin characters.
Copy of passport or certification of incorporation
A simple copy or certification of incorporation will be acceptable. However, if the applicant is individual, a signed power-of-attorney will be needed.
Name and address of the applicant
No special considerations need mentioning for this step.
The items the trademark applies to
Remember, trademarks are words and symbols representing the source of a product or service. This means that in addition to whatever physical products you may wish to sell, you can also have images and symbols representing the business and services you offer.
For the purpose of trademark applications, Nice Classifications (which take their name from the Diplomatic Conference of 1957 in Nice, France), prepared by the World Intellectual Property Organization (WIPO), provide the acceptable formats for descriptions. For more information, please click here. This is the U.N.’s equivalent to the U.S. Patent and Trademark Office’s listing of Acceptable Identification of Goods and Services, (located here)
Please note that certain Nice Classifications are subdivided into additional categories. Applications in different classifications will be treated as separate transactions for billing purposes. However, for those remaining under one classification, the Trademark Office in Beijing will include up to ten categories. An extra fee will be charged for any more.