A complete guide to "registering your company name as a trademark" to successfully expand into China: Thorough explanation from how to decide on a Chinese name to costs and period

"We have decided to expand our business in China, but how should we proceed with trademark registration?"

"Can I protect my rights in China if I keep the Japanese company name (English/Katakana)?"

"I tried to proceed with the procedure internally, but the rules unique to China were too complicated and I got stuck..."

We are rapidly receiving inquiries like this from representatives of companies considering expanding into or exporting to China.

When Japanese companies enter the Chinese market, the first and biggest hurdle is the issue of trademark (brand name)**. Particularly in China, where the kanji culture is prevalent, there are many cases in which simply using alphabetic or katakana company names is insufficient to protect business.

However, it is extremely difficult to understand the Chinese trademark system, negotiate with local agents, and come up with an appropriate Chinese name using only in-house resources.

In this article, from the perspective of intellectual property firm Evolix, which has supported many Chinese trademark cases, we will introduce ``How to choose a Chinese name without failure'', ``Overview of registration costs and schedule'', and ``Risks hidden in internal responses" is thoroughly explained in approximately 3,000 characters.

1. Why is it "dangerous" to use English/Katakana?

"The logo mark is written in English, so it's common all over the world, so shouldn't it be used as is in China?"

Many Japanese companies think this way first. However, the Chinese market has special circumstances that are different from those in other countries. In conclusion, unless you register the "official Chinese (kanji) name" as a trademark, you will not be able to protect your brand.

There are two main reasons.

① "Kanji conversion" habits of Chinese consumers

Even if Chinese consumers see a brand name in alphabets or katakana, they rarely call it by that name. They always recognize and call products by converting them into ``kanji'' that are familiar to them.

For example, Starbucks is known as "Sing Bar Ku" and Coca-Cola is known as "Ku Kou Ku La". If a company does not have an official kanji name, consumers will start calling them by nicknames based on their sound or appearance.

② Risk of misappropriated application (unauthorized trademark registration)

The scary thing here is the risk that a third party will first register a trademark for a nickname given by a consumer or a Chinese translation of your company's name.

China, like Japan, has adopted a "first-to-file" system (first come, first served). What would happen if an unrelated third party trademarked your "common name" just as your business was starting to take off?

Your company will no longer be able to do business using that name in China. In the worst case scenario, you may be sued for trademark infringement or be forced to buy the trademark for a large amount of money.

The only way to prevent this is to determine an ``official Chinese name'' for your company and secure the rights as soon as possible before expanding your business.

2. Difficulty in Chinese naming: Mere translation will fail

So, what Chinese name should I give? This is the point where in-house personnel worry the most, and where professional support is essential.

There are broadly three naming patterns in Chinese.

Pattern A: Transliteration (Onyaku)

This is a method of guessing kanji that are similar to the Japanese pronunciation.

• Example: Sony → Suo Ni

• Advantages: The sound of the original brand name can be maintained, making it easier to create a sense of global unity.

• Caution: It tends to be a list of meaningless kanji, and there is a risk that it will not make sense in Chinese or end up with a strange meaning.

Pattern B: Free translation (yaku)

This is a method to translate the meaning of the original word into Chinese.

• Example: Microsoft → Wei Luan *Micro+Soft

• Advantages: Easy to convey the company's philosophy and services.

• Notes: The pronunciation is completely different from the original brand name, making it difficult to associate it as a sound.

Pattern C: Ongi Kenyaku (Ongikenyaku)

This is a method of selecting kanji that have similar pronunciations and have good meanings that match the brand image. This is the most difficult, but if successful, can be a powerful brand asset.

• Example: Coca-Cola → Kaguchi Karaku (must be eaten and enjoyed)

• Example: Uniqlo → Yuigou (excellent clothing warehouse)

The importance of native checks

Even if you look up a dictionary in your company and list ``good meanings'', from a native speaker's perspective, it often contains problems such as ``old-fashioned,'' ``close to slang,'' and ``difficult to pronounce.''

China also has a difference between simplified characters (used in mainland China) and traditional characters (used in Hong Kong and Taiwan). At Evolix, our Chinese trademark experts will propose the best name for your company, taking into consideration the balance between the sound of the sound, the meaning of the kanji, and the strength of the trademark.

3. Technical barriers that feel "impossible within the company alone: Subclass system"

Even if you have decided on a name, the next hurdle that stands in your way is choosing the ``classification of the specified product''. There is a pitfall here where Japanese common sense does not apply.

China's unique "subclass (similar group)"

Trademark registration specifies the category (classification) of goods and services that use the trademark. Japan and China have adopted the same international classification (Nice classification), but China has its own subclass code called ``similar groups (subclasses)'' under it.

For example, even if the products are in the same "Class 25 (Clothing)" but have different subclasses, they will be judged as "dissimilar (products that are not similar)".

This is an extreme example, but if you register only the subclass of "T-shirt" and forget to specify the subclasses of "coat" or "hat," it would be possible for another company to register "coat" or "hat" with the same name.

In order to prevent this "hole in rights" (omission), it is necessary to be familiar with China's latest operational standards (similar goods and services classification table). This is too risky work for a general translation company or a person in charge of a company without an intellectual property department to handle on their own.

4. Flow and schedule for trademark registration

Generally, it takes about 10 months to 1 year from the time you consult with us until you actually receive your registration certificate. It is important to start early by counting backwards from when you start doing business in China.

STEP 1: Investigation and teaming consideration (about 2 weeks)

First, we will conduct a prior trademark search to see if the desired name has already been registered by another company.

This is the most important phase. If similar trademarks are found, you may need to make minor adjustments to the name or come up with an alternative plan.

STEP 2: Application (application procedure)

Submit application documents to China National Intellectual Property Administration (CNIPA). The process will be carried out through a trusted local agent affiliated with Evolix.

STEP 3: Formal examination/substantive examination (approximately 6 to 9 months)

Examination will be conducted by an examiner.

• If smooth: Proceed directly to "Initial appraisal announcement".

• If you receive a notice of reasons for refusal: If your trademark is rejected for reasons such as ``similarity to an existing trademark'' or ``lack of distinctiveness,'' you will need to decide whether to submit a written argument (opinion) and fight.

STEP 4: Publication period (3 months)

If it passes the examination, it will be published in the trademark gazette. The next three months are the period during which objections from third parties will be accepted.

STEP 5: Issuance of registration certificate

If there is no objection, the registration will be successful. A registration certificate (mostly electronic data) will be issued and a 10-year exclusive right will be granted.

5. Concerns about costs

You may have the impression that "overseas trademark registration is expensive." However, compared to the cost of having to change your company name or being sued for trademark infringement due to problems later on, the cost of registration in advance is by no means high.

Costs mainly consist of the following elements:

1. Local agency fee: Stamp fee paid to the Chinese government.

2. Local agent fee: Chinese patent attorney/lawyer fee.

3. Domestic office fees: Our handling, strategy planning, translation, communication fees, etc.

As a guideline, it is common for applications for "one trademark/one category" to be filed with a total cost of about [000,000 yen]including search costs. (*Subject to change depending on exchange rate, number of categories, and whether naming options are available)

Many companies request estimates for packages that include "naming ideas" and "multiple classification research." We clearly present the total cost before filing, so you can proceed with peace of mind without worrying about additional charges.

6. Summary: Chinese trademarks are an investment that buys "peace of mind"

The Chinese market is attractive, but when it comes to intellectual property, you need to be prepared for "bad theories." Don't let your guard down and think, "We're not famous yet, so it's okay." In China, there are many cases in which even the names of local Japanese small and medium-sized enterprises are registered as trademarks by local brokers without permission.

If you are currently experiencing any of the following situations, please contact Evolix immediately.

• "There is talk of expanding into China, but no one knows anything about trademarks."

• "It's a hassle to find a local agent, or you're worried about communication due to the language barrier."

• "I haven't decided on a Chinese company name or can't think of a good idea"

Intellectual property firm Evolix is more than just a "procedure agency." As an "intellectual property strategy partner" that will help your company succeed in doing business in China, we will support you from the naming stage.

You can just ask us, "Where should I start?"

Please let us know about the current situation using the inquiry form below. Our professional staff will create the best plan and estimate for your company, free of charge.