Written Chinese characters are used in Chinese-speaking areas such as China, Taiwan, Hong Kong, Singapore, and Malaysia, as well as Japan. However, due to a variety of factors over time, people in China, Singapore and Malaysia (Chinese is not an official language in Malaysia) use simplified Chinese characters, while people in Taiwan and Hong Kong use the traditional Chinese characters. In Japan, with the exception of some modified Chinese characters, the Chinese characters used in the Japanese language are actually traditional Chinese characters, or very similar renditions.
The adoption of traditional or simplified characters is a complex issue, and can be especially perplexing for foreign individuals or businesses who wish to use and register a Chinese character trademark.
In principle, simplified Chinese characters are simplified and modified from traditional Chinese characters, in the sense that simplified Chinese is written differently than traditional Chinese. However, simplified Chinese and traditional Chinese characters are pronounced in the same fashion. Even so, not every Chinese character has a different simplified or traditional “version.” For example, the characters for “山” (shan) (mountain), “水” (shui) (water) and “風” (feng) (wind) have identical simplified and traditional forms.
Generally speaking, it is easier for people who have been educated with traditional Chinese characters to read simplified characters. On the other hand, it can be more challenging for individuals who have only been educated with simplified Chinese characters in China to read the traditional ones. As such, these individuals may experience more difficulty in understanding ancient poetry or traditional culture that can only be fully conveyed in traditional Chinese characters.
Simplified and traditional Chinese characters for the same item differ in a variety of ways. For example, the traditional Chinese characters for “apple” are “蘋果” (ping guo), the simplified form of which is “苹果” (ping guo). The first character is different in its traditional form “蘋” (ping) and simplified form “苹” (ping). The second character “果” (guo) is the same in both simplified and traditional Chinese.
Another example is “registered trademark,” or “註冊商標” (zhu ce shang biao) in Taiwan, and written as “注册商标” (zhu ce shang biao) in China. Most notably, although the first character “註” (zhu) and “注” (zhu) share the same pronunciation, they differ from each other in their singular meanings. Thus, when deciding to file a Chinese character trademark, the individuals involved must consider the local language and customs in the marketing area, as well as the correct use of the trademark after its registration, such that it will not be revoked (known as “cancelled” in China) due to non-use (or improper use) in the future.
Firstly, where a trademark is registered in simplified Chinese characters in Taiwan, but used on the goods in its traditional form (or vice versa), TIPO may not deem it to be proper use. Per the territorial principle of trademark, the protection of a Taiwanese registered trademark can only reach within Taiwan’s territory, and in accordance with Taiwan Trademark Act, any non-use over three years may put a trademark at risk of being revoked, and the revocation basis would be whether it is in legal and proper use in Taiwan. Per Taiwan’s trademark practice, the so-called “use of trademark” means that a trademark must always be used with its entire representation. For example, if a trademark depicts English words, Japanese words, and Chinese characters in its representation, it has to be used with these three elements, and any absence of each element is not acceptable.
Secondly, simplified Chinese characters can certainly be registered as trademarks in Taiwan. However, as previously mentioned, people in Taiwan use traditional and not simplified Chinese characters. Taiwanese consumers may find it acceptable to see a simplified Chinese trademark on goods, but consumers may assume that these goods originate from China. Furthermore, some Taiwanese consumers may possess a negative impression of goods made in China, believing that goods from China may be inconsistent in quality and may include counterfeit items. As such, some Taiwanese consumers may express adverse reactions to goods sold in Taiwan with a simplified Chinese trademark.
In accordance with the Taiwan Trademark Act and our practice (Notice on the Use of Registered Trademarks), when a trademark is actually used differently from how it was registered, it could be deemed as being in use only when the used one and the registered one have the same identity, according to general concepts prevailing in the society. The term “identity” means that the main features used for identifying a trademark are not essentially changed, even though there are minor differences in form between the trademark actually used and the trademark registered, and per the general concepts prevailing in the society and the consumers’ perception, they convey to the consumers the same impression.
Accordingly, registering a trademark in a horizontal arrangement but using it in a vertical arrangement, changing only the font of the words or characters in the trademark, or registering a trademark in capital letters but using it in lower case, can still be deemed as having the same identity. As to whether registering a traditional Chinese character trademark but using it in its simplified form, or registering a simplified Chinese character trademark but using it in its traditional form, possesses the same identity, there are no stipulations nor court judgments be referenced. However, according to the opinions of most Examiners at TIPO, the differences between these two character forms should be judged based on general concepts prevailing in the society and the consumer’s perception. In other words, in the case where only slight difference could be seen, there may be a consistent identity, yet if there is an obvious difference, no identity may be found.
In our opinion, the examples of “歐舒丹” (ou shu dan) (traditional Chinese characters adopted for L’Occitane) in its traditional form and “欧舒丹” (ou shu dan) in its simplified form may share the same identity, given the minor difference in characters. However, using our previous example of registering the Chinese characters “註冊商標” (zhu ce shang biao) but using “注册商标” (zhu ce shang biao), supposing it is a trademark, would probably be deemed to lack identity, since the characters “註” (zhu) and “注” (zhu) possess different meanings in Taiwan. As such, TIPO is of the opinion that if a Chinese character trademark would be used by its owner in both traditional and simplified forms, and in order to have a broader scope of protection and also to avoid being plagiarized, filing separate applications for registration in both two forms may then be considered.
Moreover, there is no “series trademark” system in Taiwan, though this system is adopted in Hong Kong. Thus, an application for a series trademark depicting both traditional and simplified Chinese characters is not acceptable in Taiwan, but it would be acceptable in Hong Kong. If an application for a trademark depicting both traditional and simplified Chinese characters in its representation is filed in Taiwan, then it must always be used with both traditional and simplified characters. However, this usage would appear strange and redundant to most local consumers in Taiwan.
Conclusion
As people in Taiwan use traditional Chinese characters, it is preferable to register and use a traditional Chinese character trademark in Taiwan. If the same trademark is also registered and used in its simplified form in China, it is recommended to file a fresh application of the same trademark in its simplified form in Taiwan, so that a broader scope of protection may be obtained, and a possible plagiarization may be avoided.
