I previously reported on the problem Tesla faced when it started to sell its cars in China. See http://www.chinaeconomicreview.com/tesla-starts-offering-cars-china Well, apparently Tesla’s Chinese trademark problems are not unique. See also http://markscounsel.com/update-apple-pays-small-fortune-to-use-ipad-trademark-in-china/
Last month, the New York Times reported that as established brands expand into China, they often find that they are competing with unauthorized copies of themselves. For example, adjacent to Shanghai municipality is the city of Suzhou, with a population of over 4 million. In Suzhou you will find the Haiyatt Suzhou, a deluxe hotel offering suites, conference facilities and Western cuisine. But it is not a Hyatt nor does it have any relationship with the American Hyatt chain. In Shenyang, a city of 6 million located in Northeast China and the headquarters of China’s largest software company as well as a locale for operations of General Motors and Michelin, there is a deluxe Marvelot hotel. It may be a marvelous place to stay but it is not a Marriott. In Shanghai you can find a Peninsula hotel, part of the luxury Peninsula hotel chain. 10 minutes away is the Hengsheng Peninsula International Hotel, which is not part of that chain.
In the case of the Marvelot, it was a Marriott hotel and, when its franchise ended in 2006, Marriott pursued legal action against its former franchisee to protect its name. The hotel was prohibited from using the Chinese form of Marriott as a stand-alone word. In the case of Haiyatt, the hotel names look and sound different when they are spelled in Chinese characters.
The New York Times article quoted a Harvard Law School professor who is director of its East Asian Legal Studies Program as stating that throughout Chinese history, skillful reproduction has been highly regarded.
Therefore, in seeking to protect your trademark in China, you should protect the English version of your mark, the Chinese translation of your mark as well as any Chinese language derivations of your mark. For example, in the case of VIAGRA, you would register VIAGRA, a Chinese character name for VIAGRA and, since VIAGRA is commonly known as “Wei Ge” (meaning, “great brother”), in China, you would also register that name as well.
