As many readers of this blog already know, words in Latin script (including, of course, English words) can be registered in China as trademarks. But can you register Chinese character trademarks in the United States or the EU?
This is an important question for Chinese brands, of course, but also for US and EU brands that, for whatever reason, have developed trademarks in Chinese.
1. How to Register Chinese Character Trademarks
Chinese characters cannot be registered in the US or the EU as word marks, but it is possible to register them as device marks (known in the EU as figurative marks). Logos are one kind of device mark.
Some brands whose logo includes their name opt to register the logo instead of a word mark. In this way, they gain protection not just for the brand name, but also for the graphic elements in the logo. However, some logos do not include the brand name, and in these cases brands usually opt to register the word mark instead of, or in addition to, the logo.
2. Special Considerations for Registering Chinese Character Trademarks
For most brands registering Chinese character names, the fact that they cannot register them as word marks should not matter very much. Though technically considered a device mark, the mark will look a lot like a word mark. Ironically, the main pitfalls to look out for arise when the applications are to register an actual logo that includes the brand name.
If, as is often the case, the name on the logo is highly stylized, it might make sense to register a plainer version of the text (instead of, or in addition to, the logo). This will help keep things clear for USPTO in case someone tries to register the same name using different stylization.
In addition, if the logo includes additional text, such as a tagline, date, or location, it might make sense to also register the key word separately. This will strengthen protection in cases where only that word, and not the entire logo, is used without authorization (or where the word is used in a different logo).
3. How to Register Trademarks That Use Other Scripts
In the US, other non-Latin scripts, such as those used to write Korean and Thai, are treated in the same way as Chinese characters. Again, they cannot be registered as word marks, but can be registered as device marks. The same considerations mentioned above regarding logos should be kept in mind.
One difference between the US and the EU is that Greek and Cyrillic script can be used in the latter, on account of the fact that these are used in some EU countries (Greece and Cyprus, and Bulgaria, respectively). Marks in all other scripts are treated as they are in the United States.
For readers who are wondering, US word marks can include Latin-script letters not used in English, such as those with accent marks. See for example US Reg. No. 5969877 (BARÇA).
4. Countries That Register Chinese Character Word Marks
Finally, it is worth mentioning some countries that allow the registration of Chinese characters as word marks. Not surprisingly, these include countries with cultural and linguistic ties to China, such as Korea and Singapore. In Japan, Chinese characters incorporated into the Japanese language (kanji) can be part of a word mark, though there may be issues with characters not commonly used in Japan.
5. Looking Ahead
Some offshore jurisdictions far removed from China’s cultural sphere have allowed the use of Chinese characters in company registrations for some time. Perhaps, as China’s role in the world economy becomes even more dominant, additional jurisdictions will allow the registration of Chinese characters as word marks.