In commercial activities, companies frequently engage in promotions and product launches that require the display of their trademarks. However, a common dilemma arises when design teams wish to modify a trademark for aesthetic or other reasons. The core question is: Can a registered trademark be altered during actual use without incurring legal risks?  This article will provide an overview and guideline for this issue.

Legal Foundations

Article 24 of China Trademark Law stipulates that “Where any word or device of a registered trademark is to be altered, a new application shall be filed".

Article 49 of China Trademark Law stipulates that “Where a trademark registrant alters a registered trademark without approval, the name, address, or other matters concerning the registrant without approval, the Trademark Office shall order it to rectify the situation by a specified time; If they still fail to rectify during the specified time period, the Trademark Office shall cancel the registered trademark".

The Trademark Examination and Trial Guidelines stipulates that "unauthorized alteration of a registered trademark refers to the act by the trademark registrant or licensee of unilaterally changing the text, graphics, letters, numbers, three-dimensional shapes, color 

combinations, etc., of the registered trademark during actual use.  Such changes result in alterations to the main identifiable parts and distinctive features of the original registered trademark, consequently, the altered mark is likely to be perceived as lacking identity with the original registered trademark".

Summary

Above laws and regulations emphasize a fundamental rule: consistency between the registered trademark and the its actual use is mandatory, and the applicant is not allowed to arbitrarily alter the registered trademark.  However, in practice, the subtle alteration of a registered trademark without changing the main and distinctive part is allowed.  We strongly recommend that the trademark in actual use keep consistent with the registered trademark to avoid trademark cancellation, administrative penalties or other infringement risks.

What is "subtle alteration"

The Trademark Examination and Trial Guidelines indicates the degree of alteration that do not alter the main and distinctive part of the trademark. This means that not every change is not allowed—the key lies in whether the alteration affects the trademark’s essential identifying features.  I provide below examples that are consistent with this situation for your reference.

Ø  Changing letter case, such as from uppercase to lowercase, is generally permissible, e.g.

Registered trademark: ABC;    Actual used trademark: abc

Ø  Deleting non-distinctive descriptive elements, e.g.

Registered trademark: ;    Actual used trademark:

Such alteration may be accepted as main and distinctive part “ABC” remains clearly recognizable and "easy to use" is non-distinctive descriptive element of the trademark.

However, such judgments depend on specific facts and must be assessed case by case.  Alterations involving stylization, structural arrangement, or significant font changes are more likely to be regarded as substantive alteration and may lead the registrant to involve in the risks listed as below:

1. Vulnerability to Cancellation Actions: Third parties may file the non-use cancellation action against the registrant's trademark and such improper use may not be accepted by the CNIPA, resulting in the cancellation of a trademark.

2. Administrative Penalties: Local authorities may request the registrant to correct such improper use, and persistent non-compliance could lead to trademark cancellation.

3. Risk of Infringement: Inconsistent use may lead the registrant to involve in the infringement of other's right.

Despite the allowance for subtle changes, it is strongly advisable for brand owners to avoid non-standard use in practice.

Conclusion

While the law tolerates subtle alteration of the registered trademark that do not affect a trademark’s main distinctive part, the safest practice is keeping consistency of the trademark in actual use and the registered trademark. If the alteration of a trademark is deemed necessary, we would highly recommend filing a new trademark application. This proactive approach not only ensures legal compliance but also safeguards the long-term value of the brand.