A food company owned a registered word mark whose registered representation was standard text in regular script (Kaiti) arranged horizontally. During a brand upgrade, a design firm reworked the text into a highly stylized cursive art font and added a ribbon graphic. The company used the altered mark in its entirety on new packaging and continued to place the registration mark (®) in the upper right corner. During an inspection, the market regulation authority found that this constituted an unauthorized alteration of the registered trademark and ordered rectification within a time limit.
Key Issues
Issue 1: Is the altered mark still the registered trademark?
After comparing the representation on the registration certificate with the actually used representation, the enforcement authority held that: the writing style had changed from legible regular script to a barely recognizable cursive art font, and graphic elements absent from the registered trademark had been added. The distinctive character had changed — what was actually used was no longer the approved registered trademark.
Issue 2: How is placing (®) on the altered mark characterized?
The altered mark is an unregistered trademark; placing the registration mark (®) next to it also constitutes passing off an unregistered trademark as a registered trademark under Article 52 of the Trademark Law, for which a fine may be imposed concurrently.
Issue 3: Why did the company's defense of "we merely beautified the font" fail?
In practice, the line between a "reasonable variation that does not alter the distinctive character" and an "unauthorized alteration" is whether the relevant public would still regard the two as the same trademark. Here, legibility declined and elements were added, crossing the boundary of reasonable variation.
Applicable Law
Article 49(1) of the Trademark Law: where a registrant, in the course of using a registered trademark, alters the registered trademark without authorization, the local administration for industry and commerce (now the market regulation authority) shall order rectification within a time limit; if rectification is not made by the deadline, the CNIPA shall cancel the registered trademark.
Article 56 of the Trademark Law: the exclusive right to use a registered trademark is limited to the trademark as approved for registration and the goods as designated. The altered mark falls outside the scope of the exclusive right, and during that period, had anyone counterfeited the mark, the company would have found it difficult to enforce based on that registered trademark.
Takeaways
- Clear the trademark hurdle before any packaging redesign: after a design is finalized, first compare it with the representation on the registration certificate; anything beyond minor font tuning requires a new trademark application first;
- The (®) follows the registration certificate: only a representation identical to the certificate may carry the registration mark (®); do not apply it to a new layout before approval;
- Take rectification orders seriously: after receiving a rectification notice, resume compliant use or complete the rectification within the deadline — the endpoint of delay is cancellation of the trademark;
- The right way to upgrade a brand: register the new mark first, keep using the old trademark, switch only after approval and clear out old materials — none of the three steps can be skipped.
If you need the above process handled for you, you can book a registered agency trademark change service at MyTMBee, with full assistance from material preparation to filing follow-up.