The LEHMAN, Lee & Xu China Trademarks Newsletter keeps you up to date on recent developments in China Trademark law and practice
Using Modified Versions of Trademarks
A registered trademark is intended to be used in the form as registered, but what may happen with a trademark owner starts selling goods under a similar looking mark, but not the exact mark which has been registered? Often marks are updated to reflect changes in branding, or trends in the marketplace. How do such changes affect a trademark previously registered in China?
Believe it or not, the Administration of Industry and Commerce may order a trademark rights holder to “rectify” the trademark used on goods to match the mark as registered. Going further the China Trademark Office has the ability to outright cancel a trademark registration if it finds that the trademark owner is using in practice a modified version of the mark. However, these powers are rarely if ever used.
Trademark holders also face risks of trademark cancellation if a competitor files a motion for cancellation of a registered trademark due to non-use. If it can be proved the registered mark has not been used in 3 years, the mark is subject to cancellation. Keep in mind that if a modification to a trademark causes the distinctive features to change, using the modified mark may not be enough to keep the original trademark registration alive.
If you have a registered Trademark, but use a modified version of the mark on your goods, it may also limit your ability to identify infringers and recover damages. Chinese courts have ruled that where a trademark owner has exclusively used a modified version of the registered mark, this shall not be considered use of the registered mark, and resultantly, any part actually using the registered mark will would not owe damages for such use, as there was never any confusion in the marketplace, and no real harm.
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