- Existence of many homophonic characters poses difficulties for foreign GIs
- Challenge compounded where prior marks similar to Chinese translation exist
- Owner should pay high attention to preserving evidences of use of translated name
As with trademark owners, one challenge facing those overseeing geographical indications (GIs) is securing protection for translated names. However, there are avenues open for exploitation.
Xiaomei Duan is director of the Trademark Review and Adjudication Division Ⅷ, at the Trademark Office in China’s National Intellectual Property Administration (CNIPA). She joined Trademark Review and Adjudication Board, State Administration for Industry and Commerce, in 1997 and has made or signed more than 25,000 rulings in trademark adjudication and review cases. In 2018, she was appointed to participate in the research group on the regulation of bad faith trademarks organised by the Supreme People’s Court.
Following on from her analysis of, and insights into, the scope of protection afforded to GIs in China, in the second part of her analysis she offers guidance on how to approach the protection of translations.
When a foreign GI is pursuing protection in China, the importance of protecting the Chinese translation must be emphasised, because it is easier for the average Chinese consumer to distinguish, pronounce and memorise trademarks consisting of Chinese characters. No matter whether the Chinese translation is a translation according to meaning or a transcription according to pronunciation, and no matter whether it was conducted on the initiative and choice of the GI holder or based on custom or established by usage, it is the key that enables average Chinese consumers or the relevant public to distinguish the origin of goods.
The protection of translations was an important issue in the Dispute Settlement Case DS174/290 EC – Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs. In this case, the WTO panel report stressed that “the registration of a GI does not confer a positive right to use the name in any linguistic versions not entered in the register”. Therefore, proprietors of some EU GIs listed in bilateral negotiation documents will likely have to consider changing their official Chinese translation when pursuing trademark protection, given that there are prior marks that are similar to the Chinese translation chosen by them.
One of the main difficulties for foreign GIs seeking protection in China is that there are so many homophonic characters in Chinese. This problem is different from the issue of homonymous GI’s for wines referring to several geographical areas. Having homophonic characters means that several combinations of Chinese characters sounds alike and may refer to one and the same geographical area. And this situation becomes even more bewildering if the same foreign GI needs to be translated into Mandarin or Cantonese, or translated under different linguistic customs in China Mainland, Hong Kong or Taiwan separately.
Another challenge is that it is the responsibility of the owner of the foreign GI, or any interested party, to adduce evidence sufficient to support its argument that the trademark in question (which is in the form of a Chinese translation that is other than the official translation) has become another widely accepted Chinese translation that refers to that GI.
For this reason, the owner should pay high attention to collecting and preserving relevant evidences to support its argument, and should attach more importance to discharging the required burden of proof during both the administrative proceedings and judicial proceedings.
Helpfully it is not required by the administrative authorities or courts that there must exist one, fixed relationship between a foreign GI and its Chinese translation. Any other combination of Chinese characters is acceptable as long as it is capable of evoking the recognition of the relevant public responding to the foreign GI.
When examining whether such corresponding relationships have been established, the following should be taken into account:
- the actual usage of the foreign GI and its Chinese translation in the named goods in the course of trade
- the average foreign language proficiency level of the relevant public
- the distinctiveness and reputation of the foreign GI.
As the last point is the inherent characteristic of a GI, it should also be taken into account when determining similarity between a GI and an ordinary trademark.