In countries or regions where Chinese is used, most of the trademarks used by enterprises or businesses is often a combination of Chinese characters, foreign characters, and graphic design. They believe that if the words and graphics used as brand identification are combined into “one” design to be registered as a trademark, they will be able to obtain sufficient trademark protection. However, in order to prevent infringement and to protect the marketing achievements of the brand, it is recommended to register the Chinese characters, foreign characters, and graphic design separately.

Why registering a trademark in combination is risky

When someone attempts to copy a registered trademark, they are likely to copy just parts of the mark, such as copying the Chinese characters, foreign characters or the graphic design. In this case, if the design of the registered trademark is a combination of Chinese characters, foreign characters and graphics, the scope of “similarity” of the trademark design may be limited. For example, an infringer may only copy the Chinese characters of a registered mark or copy the Chinese characters that are not identical but “similar”, yet not copying the foreign characters and graphics of that mark, then there is an uncertainty as to whether the registered trademark and the trademark copied by the infringer will still be considered as similar.

1. Increase in risk of rejection
   
   Instead of registering their trademarks separately, many people choose to register their marks in a combination of Chinese, foreign languages, and graphics due to budget issues, which often leads to the refusal of the application. This is because the Trademark Office will separately examine the combination of a trademark consisting Chinese characters, letters, and graphics, and as long as one element constitutes the same or similar to the other's trademark, the trademark will be rejected.
   
   
2. Time consuming
   
   The examination process of trademarks applied in combination is relatively slow compared with those applied separately, because each element has to be examined separately, while separate applications do not affect one another.
   
   
3. Inconvenient to use
   
   If a trademark is registered in combination, it must be used as a whole, and cannot be separated or changed in position.
   

Benefits of registering trademarks separately

1. Strengthen trademark protection
   
   Once the Chinese, foreign language, and graphics elements are registered individually, each of them is distinct and unique, thereby making it easier to protect your rights in case of infringement.
   
   
2. Minimize the risk of trademark application being refused
   
   If a trademark applied for is a combination of Chinese characters, foreign characters and graphics, all three elements must pass the examination at the same time to be granted for registration. If a trademark is applied separately, even if one of the elements is refused due to the prior rights of another mark, the application for the rest will not be affected.
   
   
3. Flexibility of use after registration
   
   The separately registered trademarks have a strong flexibility of use, as each element can be used independently as well as in a combination of design variations as desired. Once the combination trademark is granted for registration, it can only be used in accordance with the combination as registered, and the combination cannot be altered, or used separately.
   

Some people believe that applying for a trademark by combining all the elements into a single trademark will only cost the cost of one application, whereas it would cost twice as much if applied separately. Although it seems to be cheaper to apply for a trademark in combination and more expensive to apply it separately, the benefits of registering separate elements alone are relatively higher in long-term consideration. Though the cost seems to have increased, the intangible benefits gained from the actual use of the trademark and the resulting economic value are much greater than the cost of separating the registration.

See also:
Global Trademark Registration Procedures and Fees