Last week, I attended a program at the Boston Bar Association about “Intellectual Property Protection in China: Successes and Challenges”.
Pu Feng from CCPIT, a Patent and Trademark Law Office in China, spoke about trademarks in China. Preliminary takeaways for me were the following:
- Trademark protection is growing in China – applications increased by 28.4% last year
- Time to receive a trademark registration has dropped from 3-4 years to about one year
- An availability search before filing is imperative to avoid penalties
Another strong suggestion to US applicants – CREATE a Chinese character name! There are three ways to do this:
- Create a literal translation – 苹果Ping Guo for Apple
- Create a phonetic translation – 麦当劳 (Mai Dang Lao) for McDonald’s
- Combine a literal and phonetic translation – 可口可乐 (Ke Kou Ke Le) which means “taste” and “happy”
I was happy to hear him talk about the options – we talk to our legal translation clients and marketing translation clients about these options quite frequently. It’s a name that you need to protect and use comfortably in China, so it’s worth thinking through the options. I wanted to stand in the back of the room and yell “test it!” and “research it!” so that people don’t just pick a name and hope it works. Just as picking a brand name in English, you want to think through the different options and interpretations of your choice.
Mr. Feng also talked about the subclasses of registering a patent. For example, Apple registered IPHONE under the category of “computers and computer software” in 2004. A couple of years later Chinese company registered i-phone under “phone and mobile phone. Apple ended up paying the Chinese company $3.65 million to buy the registration. Some companies try to save money by not registering in all the subclasses, but it is worth it in the long run.
Although the conference was attended mostly by attorneys practicing IP law, I found it very interesting to learn more about what our patent-filing clients need to keep in mind for expanding internationally.
In an upcoming blog, I’ll write about the changes in the IP landscape in China.