Nowadays, brand value is a well appraised concept. Every company hopes to have a brilliant name and a well established image. However, facing so many existing brands, companies may easily fall into the infringement trap. How to avoid this risk? The Labbrand team can give you some hints to understand the rationale behind trademarks registration’s criteria.

According to Trademark Examination Standards, if the pronunciation, character form, meaning, and character order of a newly created name is identical with, or similar to, the existing trademarks from the same or closely-related trademark registration category, this name is at high risk of infringement because it can easily create confusion between existing trademarks and itself. The famous malicious trademark Registration case for Starbucks is a good example.

The famous American café chain STARBUCKS registered in 1999 “STARBUCKS” and “星巴克” (xīng bā kè) as its trademark in mainland China after its entry on the Chinese market. Its Chinese name is a combination of transliteration and translation. “星 xīng” means star, “巴 bā” is the name of an ancient Chinese place, “克 kè” is kilogram. These three characters, no matter if analyzed one by one or together, have no direct relationship with coffee or with the food industry. Today, the fact that the evocation of well-cooked coffee and the leisurely life style arise when we see this name depends entirely on STARBUCKS’ continuous brand construction. Nevertheless, in 2000 a local coffee chain, tried not only to register the same Chinese name - Shanghai Xin Ba Ke (星巴克) - of its American competitor, but also a very similar English name: “starbuck”. Furthermore, the trademark color, shape and layout were all extremely close to STARBUCKS so that the two brands were hardly distinguishable. In 2003 Starbuck filed a lawsuit against Shanghai Xinbake Cafe claiming they had violated the rule of fair competition and infringed upon the US Starbucks trademark and eventually won it in 2007: the Shanghai Municipal Higher People’s Court, in fact, ruled that Shanghai Xingbake intentionally used Xingbake in its name to mislead the public and thus infringe the trademark of US Starbucks. Similarly, other brands such as “辛巴克” (xīn bā kè) and “星吧客” (xīng bā kè) are at risk of infringing in trademark registration laws for their the similar pronunciation with “星巴克” (xīng bā kè).

However, according to our rich experience in brand research, we found out that some similar brands can also co-exist. Let’s look at the example of “资生堂/SHISEIDO”(zī shēng táng) and “养生堂/YANGSHENGTANG” (yǎng shēng tang). The Chinese name chosen by the famous cosmetic brand, “资生堂/Shiseido”(zī shēng táng) originates from a sentence “至哉坤元，万物资，乃顺承天” of the well-known ancient Chinese book called Yi-Jing, which means that all living beings are born according to the natural principles. Here, “资生zī shēng” represents “滋生zī shēng” which means growing, while  “堂” táng is a traditional name for a shop. As for the health product brand “养生堂/YANGSHENGTANG” (yǎng shēng tang), “养yǎng” means maintain, take care of; “生shēng” can be understood as life and energy. Although these two names are close to each other, they exist in different industries and convey different messages. For these reasons consumers can distinguish them easily. Therefore no infringement was caused in this case.

Again in the cosmetic industry, we may find other cases of brands having similar names such as “兰蔻/LANCÔME” (lán kòu), “兰芝/LANEÍGE” (lán zhī), “兰皙欧/RECIPEO” (lán xī ōu). Are they then at infringement risk? Labbrand provides its point of view:

The character “兰lán”, from the point of view of the Chinese culture and tradition, has an positive meaning conveying the idea of perfection which is naturally quite desirable to be included in companies’ names. “兰lán” refers to orchid: orchid, plum, bamboo and chrysanthemum are regarded as “four most noble among all plants”. This flower has always been admired and praised in Chinese literature since ancient time. It is said that Confucius praised Orchid as the flower having the most elegant fragrance among all. This connotation meets well the psychological need of cosmopolitan women who pursuit the perfection and beauty. That’s why this character is used so often in cosmetic brands. Let’s have a look at another example. The brands “雅芳/AVON” (yǎ fāng), “雅倩/ARCHE” (yǎ qiàn) and “雅漾/AVÈNE” (yǎ yàng) all use a same character “雅yǎ” translating in elegant, cultured, refined. The reason behind the common choice of this character among different companies here is very similar as for the previous case. In our opinion, even though these companies are in the same industry and use this same character in their names as well as the similar name structure, the meaning they strive to convey comes from the Chinese culture. Meanwhile, their logos and packages are clearly different and can be easily distinguished so that consumers will not be deceived or confused in recognizing one brand from the other. Therefore, the risk of infringement is low.

The accumulation of brand value is a long-term process. Brand value is gradually built with great efforts both in marketing and branding, and it will be therefore a nightmare to put it at risk of legal infringement. In order to avoid this, companies need to spend more efforts during the creation stage and to reflect well about different options. This is, in fact, the first step on the long path toward branding.

To get more information on branding services please surf Labbrand website at:

 www.labbrand.com  

Vladimir Djurovic

For those of you who, like us, work in the branding and marketing industry, the importance of a good brand name comes to be pretty clear as the name is one of the most important assets of a brand. For any company or product positioned in the Chinese market, finding a Chinese name is the first step of a successful branding campaign. It is indeed a crucial tool in acknowledging, engaging and interacting with Chinese consumers.

Companies starting up in China as well as marketing manager involved in launching new products, all need to consider the initial important question of phonetic versus semantic naming. A little explanation might be in order here: phonetic naming is the translation of an original brand name into another language to convey its proper pronunciation, often without any regard for the meanings of the characters used. An example of this is Motorola: 摩托罗拉 — mó tuō luō lā. Semantic naming, instead, can be achieved in two ways. One is to translate the name and/or its components directly into its Chinese counterpart; the other is to find Chinese characters which express the metaphorical meanings associated with the name. The hassle here is that it is difficult to determine which naming solution, phonetic or semantic, is the better option and sometimes the best result can be achieved only by combining the two methods.

Having said that, you still need to consider that there are other elements to consider including: tonal progression, artistic conception, visual identity, grammatical structure and provocation. And in addition, there is a whole other set of important steps in creating and, more importantly, selecting a suitable Chinese name: brainstorming, linguistic check, legal check, and consumer testing. Said that, even having selected a great Chinese name, your brand can still be at high risk if you do not give it proper protection.

If your Chinese name is not protected, a competitor can take it, along with all the equity attached – and the cost of getting it back is high. This was a lesson Toyota learned the hard way. Several years ago, Toyota wanted to launch their Camry model in the Chinese market, believing that the new product had the right attributes and positioning to do well. As part of the branding strategy, the name 佳[jiā]美[měi] was chosen, expressing the elegance and comfort of the model’s design. Subsequently, marketing and public relations activities were launched even before the name was registered.

Just as the public was beginning to recognize and accept the product, Toyota was informed that the Chinese name had already been registered by another company. Finally, they had no choice but to change the name to 凯[kai]美[měi]瑞[ruì]. Unfortunately, all the investment in and potential returns of the initial marketing campaign had been lost.

This is just a little example of how important trademark name registration can be, since it is the only effective tool to offer protection to the brand name nation-wide. In addition, you should consider that companies can also benefit by including the trademark name in the corporate name so to avoid confusion and dilution of brand image.

However, all these benefits can be achieved only through a quite lengthy and complicated process which, in our opinion, should run parallel to the selection of the brand name. In fact, trademark registration can be divided into 45 different classes belonging to similar categories. To make sure a trademark is fully protected, it is advisable to make the registrations in several related classes. Each class is divided by industry and from the perspective of naming and trademark registration, each industry has its own preferred characters. This means that certain Chinese characters are frequently used in specific fields. The following graph shows an example of this kind of trend. The preferences are indicative of particular features in the industry and the increase in risk for registering names containing certain characters.

Sample Trademark Search Result

Character	亮[liàng]
Meaning	Clean, bright
Class	3	11	17
Searching results*	26	19	5
Frequency for use	High	Middle	Low
Example(s)	新[xīn]亮[liàng]	易[yì]亮[liàng]	金[jīn]亮[liàng]

*Search results on all the trademarks which use the character亮comes from the National Trademark Bureau database.

Source: Labbrand China Consulting, Ltd.

In conclusion, for companies starting up into the market or selecting the name for a new product, choosing and protecting the right Chinese brand name is of vital importance. The benefits of a suitable name are in avoiding future problems and in reinforcing other brand communication efforts. And finding the right partner to help you in the process of naming and trademark registration is even more important to guarantee that your name will enjoy greater protection and your brand greater success.

To get more information about creative naming services, you can surf Labbrand website at:

www.labbrand.com

Vladimir Djurovic