The overarching principle of compliant trademark use is: use it as registered, and register before you change it. This guide provides a compliance framework that companies can directly execute across four high-frequency scenarios: marking, fonts, colors, and splitting.
1. Complete Rules for the (®) Mark
Who May Use It
Only a registered trademark approved by the CNIPA and still within its validity period may carry the registration mark (®). None of the following may: a trademark still in application (even with a filing receipt), a refused trademark, an expired trademark not renewed, an altered trademark variant, or a mark never applied for.
Where to Place It
Under Article 63 of the Implementing Regulations of the Trademark Law, the registration mark (®) is placed at the upper right or lower right corner of the trademark, generally in a smaller size than the main body of the mark, to the extent that it does not overshadow it. It may appear on goods, packaging, manuals, and other attachments, and the same applies to registered trademarks on websites and promotional materials.
Is It Okay Not to Mark?
Using the (®) is a right, not an obligation; omitting it does not affect the exclusive right. However, marking has value in publicizing the right, deterring counterfeiting, and proving the other party's "knowing" state in litigation — registered trademarks are advised to be marked in a standardized manner.
The Cost of Misuse
Placing the (®) on an unregistered trademark constitutes passing off an unregistered trademark as registered under Article 52 of the Trademark Law: the market regulation authority will stop it, order rectification within a time limit, and may circulate a notice of criticism; where illegal business revenue is RMB 50,000 or more, a fine of up to 20% of that revenue may be imposed; where below RMB 50,000, a fine of up to RMB 10,000 may be imposed. Professional counterfeit-hunters treat this as a high-frequency reporting point.
2. The Boundaries of Font Adjustments
The Safe Zone
Equivalent substitution among common typefaces such as Song and Hei, switching horizontal to vertical typesetting, minor font-size and spacing adjustments, and proportional scaling — such changes do not alter the distinctive character; the mark is still regarded as the same trademark, may carry the registration mark (®), and its evidence of use is recognized.
The Danger Zone
Changing a printed typeface into a highly artistic variant, adding or deleting strokes, altering character structures, or switching between traditional and simplified characters — these changes may cause the mark to be regarded as a different trademark, with three consequences: it constitutes an unauthorized alteration of the registered trademark under Article 49, subject to rectification orders or even cancellation; the altered mark is not protected by the exclusive right; and continuing to use the old certificate's (®) constitutes passing off as registered.
The Compliant Path
For artistic or logo-style fonts the brand needs, apply for registration directly in that style. The recommended structure is dual registration of "base word mark + artistic variant": the word mark secures broad protection while the variant matches actual use.
3. The Boundaries of Color Use
The Flexibility of Black-and-White Registration
A trademark registered with a black-and-white representation is deemed to claim no color; it may be used in any colors in practice, remains the same registered trademark after a color change, may carry the (®), and its evidence is valid. Filing a black-and-white representation by default for new applications is the optimal strategy.
The Limits of Color Registration
A trademark registered in designated colors should be used in the registered colors. Long-term use of a completely different color scheme carries the risks of being found an unauthorized alteration of the registered trademark and of non-use cancellation evidence being rejected. Brands with a fixed standard color may register "black-and-white + color" as a pair, balancing flexibility with VI consistency.
The Infringement Dimension of Color Changes
If a recolored mark is similar as a whole to another party's earlier trademark, it may constitute infringement under Article 57. Run a similarity search before changing colors, especially against well-known brand colors in the same industry.
4. The Boundaries of Splitting a Combination Trademark
The Legal Consequences of Splitting
A combination registered trademark (word + device) is approved as an overall representation. Using the word or device separately after splitting: that part enjoys no exclusive right, may not carry the (®) (otherwise it constitutes passing off as registered), enforcement against counterfeiting of the split part is difficult, and evidence of split use may be rejected in a non-use cancellation defense.
The Compliant Registration Structure
The standard configuration for a mature brand is: register the word mark and the device mark separately, with a combination mark as a supplement. In actual use, the standalone word, standalone device, and combined form each have a corresponding registration certificate, and each form can properly carry the registration mark (®). If you only have a combination registration, file separate registrations as soon as possible, and use split parts without the (®) during the transition.
5. Trademark Transition Plan During a Brand Upgrade
A brand VI upgrade is the moment when non-compliant trademark use most frequently occurs. The recommended process:
- Apply the moment the new mark is finalized: file the new trademark application as soon as the VI is finalized — do not wait for the design to be fully rolled out;
- Run dual tracks during the transition: keep using the old trademark in a compliant manner and retain evidence; use the new mark without the (®), as a TM mark or a bare mark;
- Switch after approval: once the new trademark is approved for registration, switch over fully and apply the registration mark (®);
- Dispose of the old trademark: if the old registered trademark still carries goodwill, keep the registration and maintain more-than-token use or defensive maintenance; if truly worthless, evaluate abandoning it;
- Clear out materials: when the new mark launches, audit all channels for old (®) markings, to avoid a state where the old registration has been abandoned but materials still bear the (®).
6. Internal Control Checklist
- Maintain a library of registered trademark representations and review marketing materials against the registration certificates before release;
- Write the red line — "only the certificate representation may carry the (®)" — into the brand VI manual;
- Include packaging, web pages, and e-commerce detail pages in an annual compliance inspection;
- Issue usage standards to distributors and licensees in parallel, and incorporate non-compliant use into liability for breach;
- Promptly file change applications after changes of name or address, keeping certificate, mark, and materials consistent.
Compliant use is not a constraint but the foundational work that makes trademark rights "stand firm" — only when certificate and mark match can the evidence match in enforcement; only when use is compliant will evidence be credited in a non-use cancellation.
7. How to Get Started
If you need to handle the above matters, you can submit a trademark change application at MyTMBee, and a registered agency will follow up on it.