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  • The Determination on Changing Registered Trademark without Approval

    The Determination on Changing Registered Trademark without Approval

    In commercial activities, in order to cater to the promotion design style or for other reasons, many trademark owners might change registered trademarks. For example, if a registered trademark containing characters and pictures, the owner might use the 2 elements separately. However, these changes may be accompanied with legal risks.

    Article 49 of “Trademark Law” prescribes that where, in using a registered trademark, the trademark registrant changes the registered trademark without approval, ……the local administrative department for industry and commerce shall order the registrant to make correction within a prescribed time limit; and if the registrant fails to do so within the time limit, the Trademark Office shall cancel the registered trademark. Then, which circumstances shall be determined as “Changing Registered Trademark without Approval”. “Trademark Review and Trial Standards” and “Opinions of the Supreme Court on Certain Issues concerning the Trial of Administrative Cases of Trademark Authorization Confirmation” have made a principled provision, namely, illegal use of a registered trademark refers to a registered trademark has been changed on the major part and distinctiveness, which is easy to be identified as different sources of the good by the public.

    In practice, to determine whether “Change” has violated Article 49 of “Trademark Law”, the opinions and practical rules of the Trademark Office and courts could be taken into consideration. We have analyzed several common “Change” herein below.

    Firstly, to change the size. If a trademark has been changed on the proportion of size, the gap between characters, or been added with an outer limit, such as a box, a circle or a line, for those minor differences, because they have not changed the distinctiveness of this trademark, normally such “Changes” are OK.

    Secondly, to change the font of the Chinese character. For example, a simplified Chinese character is changed into a traditional one, the Song typeface is changed into Cursive, the block letter is changed into artistic text, then normally such “Changes” are illegal.

    Thirdly, to change the capitalization or lowercase in English trademarks. For the majority English characters, the difference between uppercase and lowercase is huge. It is worthy to be noted that many well-known brands have registered their trademarks for both uppercase and lowercase characters. For example, ADIDAS AG has registered both “adidas” and “ADIDAS”, REEBOK INTERNATIONAL LIMITE has registered both “Reebok” and “REEBOK”.

    Fourthly, to use characters and pictures separately, or English characters and Chinese characters jointly. Normally, the elements in a trademark combined with characters and pictures, or English characters and Chinese characters shall not be used separately, otherwise, such usages would be deemed as illegal. However, there are individual exceptions. Due to commercial practice, characters and pictures could not be used jointly, for example, an invoice could not marked with the pictures in a trademark combined with characters and pictures. (see: Beijing No. 1 Intermediate People’s Court (2011) No. 2, Zhixingchuzi No. 2500 Administration judgment). Those elements are a one to one correspondence circumstances, the consumers could identify the source of the goods. (see: Beijing No. 1 Intermediate People’s Court (2014) No. 1754, Zhixing Chuanzi No. 1754 Administrative Judgment; Beijing Higher People’s Court (2011) Gao Xing Zhong Zi No. 513 Administrative Judgment). For the later circumstance, it is still high risky from the perspective of trademark enforcement.

    In summary, it is recommended that while using a registered trademark, in order to avoid the legal risks related to the revocation of this trademark, or the infringement to other registered trademarks, the user shall avoid to change the registered trademark.