The Use of Registered Trademarks may Constitute Trademark Infringement
In a dispute over trademark infringement, the alleged infringer, if found to be having maliciously registered the alleged infringing trademark, would more often than not enter a plea on the grounds that the alleged infringing trademark had already been registered beforehand. In practice, both the Market Supervision Administration and the People’s Court are usually cautious when facing such a plea, given that the alleged infringer is legally entitled to exercise the right to use the trademark on related goods as he has obtained exclusive rights to a trademark. If the alleged infringing trademark is still in force and the trademark infringement is found to be established, there may be a paradox in which the trademark is registered but the right cannot be exercised.
However, a registered trademark is not a panacea. According to China’s Trademark Law and the relevant judicial interpretations, in some cases, even if the accused infringer claims that the alleged infringing mark has been registered, his use of the so-called registered trademark may also constitute infringement. Recently, a case represented by the author successfully prompted the court to find that the accused infringer had improperly used his registered trademark and thus violated the plaintiff’s exclusive right to use the registered trademark.
In regard to this case, the alleged infringer (hereinafter referred to as the “Defendant”) argued that the alleged infringed trademark is a registered trademark. Upon investigation, the author found that the Defendant had registered the alleged infringed trademark in a black-and-white pattern, while in the course of actual use, the defendant deliberately changed the design of his registered trademark by highlighting the distinctive part of the trademark that is most similar to the Plaintiff’s trademark, and using colors that are consistent with the plaintiff’s trademark by adding embellishments to the design.
In this regard, the author claimed to the court that the Defendant deliberately changed the distinctive part of his trademark, intentionally imitating the Plaintiff’s trademark in actual use, and used the trademark improperly, which has constituted trademark infringement in accordance with the provisions as stipulated under the Supreme People’s Court on Issues Concerned in the Trial of Cases of Civil Disputes over the Conflict between Registered Trademark or Enterprise Name with Prior Right. The court ultimately rendered support upon the author’s claim and ruled that the Defendant shall compensate the Plaintiff in the amount of RMB 2.6 million for economic losses and reasonable expenses. 
The National Intellectual Property Administration (CNIPA) also made a clear point about the practice of changing the design of the registered trademark in actual use “with intention” in a way that imitates the trademark of others. A trademark, which does not specify a color in the registration process, but is attached colors in the actual use for the purpose of free-riding, in ways which make the using of the trademark similar to a registered trademark on similar or identical goods or services are prone to cause confusion, the above conduct has constituted trademark infringement according to Article 24 as stipulated under the Criteria for Judging Trademark Infringement that was recently issued by CNIPA. 
In addition to the above improper use of the trademark that may establish infringement, there are some provisions stipulated on the Trademark Law that state how the “well-known trademark” status can protect against other registrations of a similar or identical trademark.  In accordance with Article 11 of Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law to the Trial of Cases of Civil Disputes over the Protection of Famous Trademarks, if the Plaintiff’s trademark has ever been certified as a “well-known trademark” and the registered trademark used by the Defendant is a copy, imitation or translation of the Plaintiff’s “well-known trademark”, the court may make a ruling on the trademark infringement and stop the defendant from using the said trademark.
But, the said Article has some applicable conditions that need to be met, i.e., the alleged infringed trademark has been registered for less than 5 years and the Plaintiff’s trademark is well-known when the Defendant files a registration application.
Relevant provisions and laws:
 Article 1: For a lawsuit filed on the ground that the character or graphic used in the registered trademark of other party infringes upon the plaintiff’s copyright, patent right for a design, right to enterprise name, or other prior rights if the lawsuit conforms to the provision of Article 108 of the Civil Procedure Law, the people’s court shall accept it. (Provisions of the Supreme People’s Courton Issues Concerned in the Trial of Cases of Civil Disputes over the Conflict between Registered Trademark or Enterprise Name with Prior Right).
 Article 24: A trademark, which does not specify a color in the registration process, but is attached colors in the actual use for the purpose of free-riding, in ways that using the trademark similar to a registered trademark on similar or identical goods or services are prone to cause confusion, and the above conduct has constituted trademark infringement. (Criteria for Judging a Trademark Infringement).
 Article 11: If the registered trademark used by the defendant is a copy, imitation, or translation of the plaintiff’s famous trademark and if a trademark right infringement is constituted as a result of a violation of Article 13 of the Trademark Law, the people’s court shall, upon motion of the plaintiff, make a ruling on stopping the defendant from using the said trademark, but it shall not support the plaintiff’s motion under either of the following circumstances: 1. The time limit for applying for requesting the revocation of a trademark as prescribed in paragraph 2 of Article 41 of Trademark Law has expired; or 2. The plaintiff’s trademark is not considered famous when the defendant files a registration application. (Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law to the Trial of Cases of Civil Disputes over the Protection of Famous Trademarks)