In China, upon the approval of registration of a trademark by the Trademark Office, the trademark registrant shall enjoy the exclusive right to use the trademark. The registrant may use the registered trademark by itself or license others to use it, yet such use shall be reasonable and standardized, and shall not harm national interests, social public interests or the legitimate rights and interests of others. Any illegal or irregular use of a registered trademark may result in a rectification order and a fine; in serious cases, the trademark may be cancelled or declared invalid.
Specifically, trademark registrants shall pay attention to the following aspects in the course of use:
1. Goods for which registered trademarks must be used
Unregistered trademarks may be used on most goods in China, provided that they do not violate the prohibitive provisions of the Trademark Law (e.g., Article 10) and do not harm the legitimate rights and interests of others. However, registered trademarks are mandatory for certain goods, such as cigarettes, cigars, packed cut tobacco, and electronic cigarettes and other new tobacco products. Goods bearing unregistered trademarks for such categories shall not be sold in the market.
2. Use within the approved scope
The exclusive right to use a registered trademark is limited to the approved trademark and the goods for which the registration is approved. If a registrant intends to obtain the exclusive right to use a registered trademark on goods beyond the approved scope, a new registration application shall be filed. Using a trademark on unapproved goods shall be deemed as the use of an unregistered trademark, and the registration mark “®” shall not be affixed thereto.
3. Prohibition of deceptive use
Deceptive use refers to the act of using a registered trademark in conjunction with goods names, advertising slogans, goods packaging and decoration, etc., which causes the public to misunderstand the quality, place of origin, craftsmanship and other characteristics of the goods.
4. Prohibition of unauthorized changes of registered particulars
Unauthorized changes of registered particulars include the act of arbitrarily changing the registered trademark, the name or address of the registrant, etc., which leads to the public’s misunderstanding of the quality of the goods and other characteristics, or changes for the purpose of free-riding on others' trademarks.
Example: A trademark registered for lubricating oil is altered in use to resemble BP P.L.C.’s mark. The registered mark, altered form and BP mark are illustrated below.
5. Preventing a Mark from Becoming Generic
A registered trademark shall be used in a prominent position or with the registration mark "®" affixed, and shall not be used interchangeably with goods names, descriptive terms for goods, etc. Otherwise, it may gradually degenerate into a generic name of the goods and lose its inherent distinctiveness as a trademark.
Example: “阿司匹林” (English: Aspirin), originally a registered trademark, has degenerated into a generic name for a type of analgesic due to improper use.
6. Avoiding non-use without justifiable reasons for three consecutive years
If a registered trademark is not used without justifiable reasons for three consecutive years, any person may apply to the Trademark Office for its cancellation. A large number of registered trademarks have been cancelled for this reason in practice. Whether using the trademark by itself or licensing others to use it, the registrant shall properly manage and retain evidence of the trademark's use to mitigate the risk of cancellation.
7. Prohibition of prominent use of "Well-known Trademark" in commercial activities
The recognition of a well-known trademark is only a factual finding required in hearing trademark cases of application, registration and use disputes. Producers and business operators shall not use the term "Well-known Trademark" on goods, their packaging or containers, nor in advertising, exhibitions and other commercial activities.
8. Prohibition of obstructing others' legitimate use
If a person has used a trademark identical or similar to a registered trademark on the same or similar goods, which has acquired a certain influence, prior to the filing date of the registered trademark, the holder of the registered trademark shall not prohibit the prior user from continuing to use the trademark within the original scope of use, but may require the user to affix appropriate distinguishing signs.
9. Supervision obligation for licensed use
When licensing others to use a registered trademark, the registrant shall supervise the quality of the goods on which the licensee uses the registered trademark, and the licensee's name and the place of origin of the goods must be indicated on the goods.
Conclusion:
Obtaining trademark registration is not a one-time solution, nor should a registered trademark become a dormant right. Trademark registrants shall use trademarks actively in accordance with the law and relevant regulations, and give full play to the trademark's function of identifying the source of goods.
