Trademark, as a symbol of the company's identity in its business activities, has great value.  To obtain exclusive right for a trademark, trademark owner needs to invest time and money. While, after obtaining a "registered trademark", non-standard use may lead to different risks, and even the possibility of revocation!

[Relevant Law]

According to Article 49 of Trademark Law, where, in using a registered trademark, the trademark registrant changes the registered trademark, the name or address of the registrant, or any other registered matter 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 National Intellectual Property Administration, PRC (“CNIPA”) shall cancel the registered trademark.

Where a registered trademark becomes a common name of goods on which it is approved to be used or the use of the registered trademark has ceased for three consecutive years without good reasons, any entity or individual may apply to the CNIPA for cancellation of the registered trademark.

[Inappropriate use situation]

1. Registrant changes the registered trademark

The Article 49 of the Trademark Law refers to self-alteration of a registered trademark, which means that the registrant of the trademark unilaterally makes partial changes or alters the relative position of the elements that constitute the registered trademark, such as text, graphics, letters, numbers, three-dimensional symbols, color combinations, and sounds, affecting the cognition or identification of the registered trademark, while still indicating "registered trademark".

Self-alteration of a registered trademark generally refers to changes made without altering the distinctive part of the trademark, that is, the trademark's expression have not undergone substantial changes, and the altered trademark still indicates a registered trademark. If the relevant changes lead to a substantial change in the elements of the registered trademark, resulting in a different trademark, and the altered trademark is not registered and still indicates a registered trademark, it constitutes the illegal act of an unregistered trademark posing as a registered trademark.

It should be emphasized that if a registered trademark is deformed or modified in violation of Article 10 of the Trademark Law, it shall be punished in accordance with Article 52 of the Trademark Law; if it constitutes the circumstances described in Article 22 of the "Criteria for Judging Trademark Infringement," it constitutes trademark infringement and shall be punished in accordance with the second paragraph of Article 60 of the Trademark Law. For concurrent violations of multiple legal norms, punishment shall be imposed according to the provision with the higher amount of fines in accordance with Article 29 of the Administrative Penalty Law.

Exceptional circumstances

However, the act of registering the overall packaging of cigarettes as a trademark, and making changes to the warning label content and area in accordance with relevant national regulations, does not constitute a violation of Article 49, paragraph 1 of the Trademark Law.

2. Changes the name or address of the registrants, or any other registered matter without approval

Any of the following situations shall be regarded as the self-alteration of the registered trademark's registration matters as provided in Article 49, paragraph 1 of the Trademark Law:

(1) Where the name (individual name or name of entity) of the trademark registrant has changed and no application for change has been filed with the CNIPA in accordance with the law;

(2) Where the address of the trademark registrant has changed and no application for change has been filed with the CNIPA in accordance with the law, or the actual address of the trademark registrant is inconsistent with the address recorded in the Trademark Registrar;

(3) Where other registration matters, in addition to the name and address of the trademark registrant, have changed and no application for change has been filed with the CNIPA in accordance with the law.

[Risk]

1. Correct within a prescribed time limit

The registrant of a trademark may change the registered trademark, the name of the registrant, address, or other registered matters on its own, and the department responsible for trademark enforcement shall order the registrant to make corrections within a specified period.

2. Be cancelled

1) According to Article 49, Paragraph 1 of the Trademark Law, "If the trademark registrant changes the registered trademark, registrant's name, address, or other registration matters without authorization during the use of the registered trademark, the local Administration for Market Regulation shall order the registrant to make corrections within a specified period of time; if the correction is not made within the specified period, the CNIPA shall revoke the registration of its trademark";

2) Where a registered trademark becomes a common name of goods on which it is approved to be used, any entity or individual may apply to the CNIPA for cancellation of the registered trademark;

3) Any organization or individual can apply to the CNIPA to revoke the trademark if it is not used for three years due to the registrant's change;

3. The risk of infringing on the trademark rights of others

If the owner of a registered trademark changes the registered trademark by splitting, combining, or modifying the word, the actual mark used may be someone else's trademark or may be similar to someone else's registered trademark, thereby facing the risk of trademark infringement.

[How to avoid the risk]

1. In practice, the approved scope of goods to be used must not be exceeded or changed.

2. Secondly, if there is a change in the trademark registration matters, an application for change should be made through formal procedures in a timely manner.

3. If it is necessary to change the use of the registered trademark for production and operation, a new application for registration of the changed trademark should be filed in a timely manner.

4. Legally use and protect registered trademarks through proper publicity, timely rights protection, etc., to avoid being revoked as a generic name.