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Table of Contents 1. Importance of trademark registration certificate in Vietnam 2. Differences...
Example
In China, registered trademarks are logos and are colored. The trademark used is black, and different colors are used. Does this constitute use of a trademark? Please let me know any other precautions.
Difference between color designated trademark and monochrome trademark
The Chinese trademark system distinguishes between "trademarks that do not specify color (monochrome trademarks)" and "trademarks that specify color (color trademarks)."
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Monochrome trademark (no color specified): A trademark registered as a black and white design without specifying the color at the time of application. In this case, no matter what color the trademark is displayed in actual use, it will be considered "use of the registered trademark." In other words, as long as the shape and text are the same, using a different color, such as blue or red, is usually considered a trademark.
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Color trademark (color specified): A trademark registered by specifying a specific color or color combination at the time of application. In this case, unless the color is used exactly as written on the registration certificate, it will not be recognized as use of the registered trademark itself. If the design is the same but the colors are different, it may be seen as using different trademarks.
In short, Color, one of the constituent elements of a trademark, is not treated as lightly as words or figures in China, so if you change the color, it is difficult to be considered the same trademark. In Japan, using a registered trademark in a different color is not a problem, but in China you need to be careful.
Is the use of different colors considered “authentic use”
In the case, a graphic trademark registered in color is used in a solid black (monochrome) logo. In principle, use in a color different from the one at the time of registration does not fall under the use of a registered trademark under the Chinese Trademark Law. In other words, if your registered trademark is a logo with a specific color, but you actually only use a logo in a different color (black), there is a high possibility thatthat use will not be recognized as use of the registered trademark.
This creates a risk that it will not be considered a "bona fide use" (legal use of the trademark). Specifically, if a trademark is not used for designated goods or services for three years or more after registration, a third party may request cancellation of non-use (cancellation of registration). In the case of a color-designated trademark, it is necessary to show evidence that the color was used as per the registration certificate, but if only black is used, there is a high possibility that the evidence will be judged as insufficient. Therefore, there is a real risk that the trademark will be considered an "unused trademark" in a non-use cancellation trial.
Risks and legal provisions of non-use cancellation
Under Chinese Trademark Law, if a trademark is not used for three consecutive years without justifiable reason, the trademark is subject to cancellation (non-use cancellation system). Regarding color trademarks, Use in a color different from the color at the time of registration is not recognized as “use.Therefore, if the trademark is not actually used in the registered color within three years, the risk of cancellation increases.
Additionally, Chinese Trademark Law prohibits unauthorized changes to registered trademarks. When a trademark right holder or licensee uses a registered trademark, it is stipulated that the trademark owner or licensee may not change the characters, figures, colors, etc. of the trademark without permission.Violating this may result in a correction order or cancellation of registration. Specifically, for example, if you change the color of a color-designated trademark and use it with the ® mark, it falls under the category of "arbitrary change of a registered trademark" in Paragraph 1 of Article 44 (Article 49 under the current law) of the Trademark Act, and you may be subject to a corrective order or cancellation from the Trademark Office.
(*Usually, local authorities first order corrections, and if they are not complied with, the Trademark Office cancels them.)
From the above, using a color that differs from the registered trademark is not only considered non-use, but may also be consideredlegally inappropriate use of the registered trademark. To avoid risks, it is important to use trademarks as registered (including colors) as much as possible.
Practical notes and advice
When using a trademark in different colors, please note the following points.
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Efforts to use the colors as registered: Trademarks that have already been registered with color specifications should be used as much as possiblein the colors listed on the registration certificate. You can reduce the risk of non-use revocation by using the registered colors in at least some products and advertising and keeping evidence of this.
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Using monochrome trademarks: To prepare for the future, consider registering an additional black and white trademark that does not specify color. If you register it in monochrome, it will be recognized as a trademark even if you use it in any color afterwards, which greatly increases the flexibility of use. In practice, it has been pointed out that ``unless there are special circumstances, monochrome applications are preferable.''
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Additional registration of different color variations: If you absolutely want to use a specific color for your brand image, it is safe to register the different color logo separately as a trademark. Even if the design is the same, different colors are treated as separate trademarks, so by registering each color, you can ensure protection and use history for each color.
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Hedging risks by registering multiple copies: If you can afford it, it is ideal to register both the monochrome version and the color version. This is because you can enjoy both the benefits of free use through monochrome registration and the protection of your land image through color registration. In fact, companies with financial resources have adopted a strategy of acquiring both black and white and color images and using them depending on the situation.
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Indication when using a trademark: In China, there is no obligation to display the Ⓡ mark when using a registered trademark, but if it is displayed, it must be displayed inthe same form as the registered trademark. Avoid adding Ⓡ in a color or shape different from the registered one (this may be considered a false statement or unauthorized change).
As mentioned above, In China, the use of different colors requires careful handling. Especially if you are using a trademark that is currently registered in color but in solid black, we recommend that you consider immediately applying for an additional monochrome version andensuring that the trademark has been used in accordance with the registered trademark. This will allow you to use your brand logo flexibly while being prepared for the risk of cancellation due to non-use.
Summary
In China's trademark system, emphasis is placed on whether the trademark is used within a range that is socially accepted as being the same as a registered trademark, but this range changes greatly depending on whether or not a color is specified. Rights to color-designated trademarks can only be maintained and exercised if they are used in the registered color, and if the trademark is used in a different color, it may be judged as unused. On the other hand, if it is a monochrome trademark, it can be used without any problem even if the colors are changed.
In the case of this example, there is a risk that the current use (black logo) will not be recognized as use of a registered trademark. Therefore, measures are needed to avoidnon-use cancellation. Based on the above advice, it is desirable to review your trademark portfolio (additional registration of a monochrome version, etc.) and correct usage methods as necessary. By taking appropriate measures, you can firmly maintain and utilize your valuable trademark rights in China.
AUTHOR
Takefumi SUGIURA （杉浦 健文）
EVORIX Intellectual Property Law Firm Managing Patent Attorney
Supports clients across IT, manufacturing, startups, fashion, and medical industries, covering patent, trademark, design, and copyright filings through trials and infringement litigation. Specialized in IP strategy for AI, IoT, Web3, and FinTech. Member of the Japan Patent Attorneys Association (JPAA), Asian Patent Attorneys Association (APAA), and Japan Trademark Association (JTA).
