Introduction: the questions a foreign applicant asks about an English word mark

Foreign brand owners filing English word marks in China tend to ask a predictable set of questions. Is a single letter registrable? Does a misspelling help? What about an acronym, or a plain descriptive word?

The Trademark Examination and Adjudication Guidelines (商标审查审理指南) answers most of them, with worked examples. What follows is the set of boundaries it draws for English and Latin-script signs, organised by the question a brand owner is actually asking.

The governing provision is Article 11 of the Trademark Law, which bars registration of signs that consist only of the generic name, figure or model of the goods; signs that only directly indicate the quality, main raw materials, function, use, weight, quantity or other characteristics of the goods; and signs otherwise lacking distinctive character. Article 11(2) provides the cure: a sign that has acquired distinctiveness through use and become readily identifiable may be registered.

The threshold principle: assess the meaning through Chinese eyes

Before the specific rules, one principle governs them all.

Where a mark consists of a foreign-language sign, distinctiveness is assessed according to the ordinary understanding of the relevant public in China. The word's inherent meaning in its own language may affect its distinctiveness on the designated goods, but if the relevant Chinese public's recognition of that meaning is low, and the public can use the sign to identify the source, the sign may be held distinctive.

Two consequences follow, and they pull in opposite directions.

  • An obscure foreign word can be distinctive precisely because it is obscure. If Chinese consumers do not know what the word means, they will treat it as an arbitrary sign — which is exactly what a trademark should be.
  • A familiar foreign word is exposed on two fronts. The same recognition that made it collide with a Chinese equivalent under the similarity rules also makes it descriptive, generic or non-distinctive under Article 11.

This is why the same English word can be registrable for one category of goods and not for another. Distinctiveness is assessed against the designated goods or services, not in the abstract.

Single letters

A single, unadorned letter is in principle not distinctive, and will not acquire distinctiveness merely because a simple decorative frame or border has been added. The Guidelines' reasoning is that consumers are unlikely to notice a bare letter, and if they do, will not treat it as a sign identifying and distinguishing a source.

A single letter may also be descriptive, in which case it faces both limbs of Article 11:

  • "A" for all kinds of goods signifies the best quality.
  • "S", "M", "L" and "F" signify clothing sizes.
  • "C" in connection with computer software refers to a programming language.
  • "g" signifies a unit of weight.

Refused examples include "E" for welding rods, welding wires and welding bars, and "G" for massage devices and slimming devices.

Accepted examples illustrate the escape route. A stylised "B" for travel trunks, wallets and backpacks was accepted because the letter was stylised and departed from the image of the usual single letter, so it could identify and distinguish a source. A "Z" for cosmetics and body cleaners was accepted because it was combined with another distinctive device, making the mark as a whole distinctive.

So the door is not closed on single letters — but a plain typed letter will not pass, and adding a plain box around it will not change that.

Two or more letters

The position improves sharply at two letters. A sign consisting of two or more letters is in principle distinctive and registrable, provided it is not descriptive of and not a generic name for the designated goods or services.

Accepted examples include "SR" for herbal beverage preparations and mouth fresheners, and "SYM" for motorcycles and their parts and fittings.

A refused example shows where the descriptive objection bites even at this length: "XXL" means extra large or extra, extra large, and used in connection with knee protectors and elbow protectors consumers would read it as an indication of the size of the goods rather than as a source identifier.

The distinction between "SR" and "XXL" is not the number of letters. It is whether the letters communicate something about the goods.

Acronyms

An acronym is not automatically registrable merely because it is short. Where a combination of letters is a generic name of the goods or services used in the trade, or is an acronym describing the quality, function or other characteristics of the goods or services, it is not distinctive regardless of how many letters it contains.

Length therefore offers no protection when the letters carry descriptive content to the trade. A four- or five-letter acronym that the industry uses to describe the product is as unregistrable as a two-letter descriptive combination.

Words with several meanings

Where a foreign word has several meanings, the Guidelines take the strict position: if any of the meanings is descriptive of, or is a generic name of, the goods or services, the mark is not distinctive.

The worked example is "cell". It can mean a small compartment, a single room usually for one person, one of the compartments of a honeycomb, a device for conducting electric current by chemical action, a battery, or a cellular phone. Used on batteries, it is a generic name of the designated goods and is not distinctive.

This is the same structural rule that applies under the adverse-effects provision: one adverse meaning is enough. Here, one descriptive meaning is enough.

The practical implication is that a foreign applicant must consider not only the meaning they intend, but every meaning the relevant Chinese public could reach, on those specific goods.

Incorrect spelling and customary spelling

Foreign applicants frequently try to escape descriptiveness by misspelling the word. The Guidelines close this route where the misspelling is trivial.

Where a foreign word comes from incorrect spelling of a generic name or a description of the designated goods or services, and the incorrect spelling involves only such a minor change that consumers can still recognise it as the generic name or description, the misspelling is still deemed non-distinctive.

The worked example: "MILLENIUM" and "MILENNIUM" are both incorrect spellings of MILLENNIUM. Used on champagne and brandy, the word would cause the public to associate it with "millennium" — the year 2000 — and is descriptive of the vintage of the goods.

Customary shortened forms are treated the same way. A common shortened form that replaces descriptive word(s) is not distinctive. The Guidelines' examples:

  • "TECH" is the customary spelling of "TECHNOLOGY".
  • "XTRA" is the customary spelling of "EXTRA".
  • "E", a shortened form of "ELECTRONIC", often refers to the provision of goods or services involving electronics or electronic technology, or by electronic means.

And where the entirety of a mark containing this kind of word is descriptive of the designated goods or services, the mark should be refused:

  • "Hi-Tech" for clocks, watches and wrist watches.
  • "XTRA-SAFE" for transparent safety glass and reinforced glass.
  • "e-book" for electronic books, electronic memory cards, electronic dictionaries, electronic notebooks.

The pattern is that a shortened or altered form still communicates the same descriptive content. Abbreviation is not a route to distinctiveness where the meaning survives.

Composite marks: the distinctive core does not always carry the whole

A common assumption is that if a mark contains one distinctive element, the mark as a whole is distinctive. The Guidelines' approach is more qualified, and the qualification matters for marks built as "distinctive word + descriptive word".

Where a mark is composed of independent textual and independent other elements, and the textual part lacks distinctiveness, the mark as a whole should be held to lack distinctiveness. The reasoning is that in a mark made up of text and device elements separately, the text is the part by which the mark is called, so a non-distinctive textual part makes the whole non-distinctive.

There is a procedural escape. Where the other element has strong distinctive character and the trademark department considers that element capable of distinguishing source, it may issue an examination opinion requiring the applicant to disclaim the non-distinctive textual part. If the applicant does not disclaim it, or does not respond within the prescribed period, the application is refused.

For a foreign applicant, this creates a choice: disclaim the weak element, or lose the application. A mark assembled as "descriptive word + logo" should be planned with that outcome in mind.

What this means for choosing an English mark

Drawn together, the Guidelines suggest a short set of screening rules for English word marks destined for China.

  • Check what the word means, in every sense, on your goods. Not only your intended meaning. One descriptive or generic meaning among several can sink the mark.
  • Do not build the mark out of what the product is. Descriptive content is the single most reliable route to a refusal, and "only" descriptive is read broadly once an examiner can reach the descriptive meaning.
  • Misspelling and abbreviation rarely help. If consumers still recognise the descriptive meaning, the change accomplishes nothing.
  • Prefer coined words and unusual letter combinations. They avoid both the descriptive objection and — as the similarity rules show — the collision that a familiar English word's meaning creates.
  • A single plain letter will not be registered. If a single letter is essential to the brand, plan for stylisation or combination with a distinctive device, and accept that the letter itself may need to be disclaimed.
  • Two or more letters are registrable in principle, subject to the descriptive and generic limits. This is a workable space.
  • Plan the disclaimer question in advance. If your mark combines a descriptive word with a device, expect the examination opinion route and decide whether disclaiming is acceptable before you file.
  • Remember that distinctiveness is judged per class. A word that is descriptive for one category of goods may be perfectly registrable for another.

The consistent theme is that Article 11 is assessed through the understanding of the Chinese consumer, on the designated goods. The question is never "is this an unusual word in English?" It is "does the Chinese public, looking at my goods, read this sign as a name or as a description?"

Frequently asked questions

Is a single letter registrable as a trademark in China?

In principle no. A single, unadorned letter is treated as not distinctive, and adding a simple decorative frame or border does not change that. It can also be descriptive — "S", "M" and "L" indicate clothing sizes, "C" in software refers to a programming language, and "g" indicates a unit of weight. A stylised letter, or one combined with a distinctive device, can be registrable, as the Guidelines' accepted examples show.

Are two letters enough to be distinctive?

Generally yes. A sign consisting of two or more letters is in principle distinctive and registrable, provided it is not descriptive of and not a generic name for the designated goods or services. The Guidelines give "SR" for herbal beverage preparations and "SYM" for motorcycles as accepted examples. "XXL" was refused because on protective gear consumers read it as a size indication rather than a source identifier.

If my English word has one descriptive meaning and several other meanings, is it distinctive?

No. The Guidelines state that where a foreign word has several meanings, if any of the meanings is descriptive of, or is a generic name of, the goods or services, the mark is not distinctive. "Cell" was held a generic name when used on batteries, notwithstanding its other meanings.

Does a deliberate misspelling make a descriptive word registrable?

Generally not. Where the misspelling comes from an incorrect spelling of a generic name or description, and the change is only minor enough that consumers still recognise it as that generic name or description, it remains non-distinctive. "MILLENIUM" and "MILENNIUM" were both treated as incorrect spellings of MILLENNIUM and held descriptive of vintage when used on champagne and brandy.

Are abbreviations like "TECH" or "E" distinctive?

Not where they are customary shortened forms carrying the same meaning. "TECH" is the customary spelling of "TECHNOLOGY", "XTRA" of "EXTRA", and "E" is a shortened form of "ELECTRONIC". Where the entirety of a mark using such a form is descriptive — as with "Hi-Tech" for watches or "e-book" for electronic reading devices — the mark should be refused.

Can an acronym be registered in China?

It depends on what the letters communicate. Where a letter combination is a generic name of the goods or services used in the trade, or an acronym describing their quality, function or other characteristics, it is not distinctive no matter how many letters it contains. Length offers no protection where the letters carry descriptive meaning to the trade.

My mark combines a descriptive English word with a logo. Will it be registered?

It may be refused as a whole. Where a mark consists of independent textual and independent other elements and the textual part lacks distinctiveness, the mark as a whole should be held non-distinctive, because the text is the part by which the mark is called. The office may instead issue an examination opinion requiring you to disclaim the non-distinctive textual part; if you do not disclaim or do not respond, the application is refused.

Is distinctiveness judged on the word itself or on my goods?

On the goods or services you designate. Distinctiveness is assessed through the ordinary understanding of the relevant Chinese public for the claimed goods, so the same word can be descriptive for one category and registrable for another. This is also why a foreign word's inherent meaning matters less than whether Chinese consumers recognise it — an obscure word functions as an arbitrary sign and is easier to register.

What kind of English mark is easiest to register in China?

A coined word or an unusual letter combination with no descriptive meaning for the goods. Such a mark avoids the descriptive and generic objections under Article 11, and it also avoids the similarity problem that arises when a familiar English word's meaning matches an existing Chinese registration. Uncommon or invented words are structurally the safest category.

Need help assessing whether an English word mark is registrable in China? Get in touch and we will review the position with you.