Clients often ask us whether they need to register their company name as a trademark in China. As I am the product of an American law school, it’s hard to resist the gravitational pull of responding with “it depends,” but in this instance I have little difficulty. English-language company names have virtually no protection in China. If you don’t want someone else to use your company name in China, you should register it as a trademark.
It’s true that in order to form a business entity in China (e.g., a joint venture, WFOE, or representative office), you must select both a Chinese name and an English name for the entity. But only the Chinese name has any legal relevance. That name needs to be approved by the State Administration of Industry and Commerce (SAIC) and cannot conflict with preexisting company names. The English name, on the other hand, is just a trade name that appears on your company chop. It does not need to be approved, and you can change it at will. It has the same amount of protection of any trade name used without registration: virtually none.
Even your Chinese-language name won’t have any protection as a trademark. Although company formations and trademark registrations are both under the umbrella of the State Administration of Industry and Commerce (SAIC), the departments do not have any meaningful cooperation. A third party could register your entity’s Chinese name as a trademark, and you could register a third party’s trademark as your company name. But because a company’s legal name in China often has little in common with the company’s trade name, most people only care about the latter.
If you haven’t formed a business entity in China, then you have no presence other than the names you use on your products or services. For some companies, like Coca-Cola and McDonald’s, the company name is the brand, and they very much want to protect that name. For other companies, like National Amusements (the parent company of Viacom and CBS) and Yum! Brands (the parent company of KFC, Taco Bell, and Pizza Hut), the company name is not the brand, and they are perhaps not as concerned about protecting it. You’ll have to make that call for yourself.
China has a well-publicized exception that affords protection to “well-known” trademarks even if they’re not registered in China. But as we have written numerous times, this exception is almost never available: unless your company is named Coca-Cola or Nike, you are not well-known. Companies often push back against this and argue that they are well-known in their country among people who know their industry, and that makes their company name well-known. But this is not the standard. For a mark to be considered well-known in China, the mark must be generally known throughout China. Take a big American toy company like Hasbro or Mattel. Most Americans have heard of those companies, even if they don’t follow the toy and game business. But if we stopped 100 people walking down the street in Nanjing, how many do you think would be able to correctly identify either company?
The only protection for your English-language company name in China comes from registering it as a trademark with the Chinese Trademark Office. Relying on any other method is just magical thinking.
We will be discussing the practical aspects of Chinese law and how it impacts business there. We will be telling you what works and what does not and what you as a businessperson can do to use the law to your advantage. Our aim is to assist businesses already in China or planning to go into China, not to break new ground in legal theory or policy.