No two China trademark strategies are the same, but one thing is pretty much a constant: You should register the company’s original English name.
Before we go on, a clarification: I use “English name” as shorthand, but these names are often in other languages, or simply be a random collection of Latin letters. Names in scripts other than the Latin one (for example, Arabic or Cyrillic) present other challenges, and will surely be the subject of future posts – but we will not focus on them here).
When you set up a business entity in China (such as WFOE), it is the Chinese name that is the legal name. You could (and companies do in fact) change the English name without any need to change the company registration. Conversely, there is nothing that stops someone else (such as a bad-faith competitor) from using that English name—unless you register that English name as a trademark.
To be clear, you should also register the company’s Chinese name as a trademark. Having incorporated a business entity in China, you will have some protection against bad-faith actors using the company name if they, for example, try to open a bank account in that entity’s name. But that name is still fair game for someone who wants to register it as a trademark.
Let’s flesh out this last point a bit, in case there’s any confusion. Say you form a WFOE in China called Shanghai Herrada Coffee Company Limited. As discussed, it is the Chinese name that has legal effect, and let’s make that 上海拉达咖啡有限公司. If some random person, unconnected to the company, signed a contract on the company’s behalf, it would be null and void. However, it that same person tried to register the 拉达咖啡 mark (and/or the HERRADA COFFEE, for that matter), then the fact there’s a registered company whose name includes that mark will not be an obstacle to trademark registration.
At this point, it is worth mentioning “well-known” trademarks. Chinese law extends some protection to unregistered marks that are “well-known,” but this is an exceedingly difficult standard to meet. As I explained last year,
A few years ago I represented an English Premier League team that became very proactive when it came to its China trademark protection. Unfortunately, some of their trademarks had already been registered by squatters, taking advantage of China’s first-to-file system. One of the arguments we made as the matter wound its way through the system was that the trademarks were “well-known,” and hence subject to protection even if unregistered (See Art. 13 of China’s Trademark Law).
Surely, our client thought, one of the top teams in one of the most popular sports leagues in the world would meet the standard for being well-known. Well, it didn’t, and the point here is that relying on “well-known” status for protection is a fraught proposition for all but a small tier of extremely well-known brands (who are probably smart enough to register their IP anyway).
Finally, we should also clarify that we are talking about company names that are part of the brand identity. In some cases, the company’s legal name is not a part of the brand identity. Building up on our earlier example, imagine that Shanghai Herrada Coffee Company Limited was set up to operate a coffeeshop called Café Pamplona. There might be good reasons to trademark the company’s official name (or parts of it), but the focus of the trademark strategy would be on the Café Pamplona brand (which could include the CAFE PAMPLONA word mark, logos, menu items, etc.).
In sum, if you want your company’s English name protected, you have to register it as a trademark.
