CNIPA's answers on assignment and licensing

Where a registered trademark is assigned, the registrant shall assign together any identical or similar marks it has registered on identical or similar goods.

Where a registered trademark is assigned, the registrant shall assign together any identical or similar marks it has registered on identical or similar goods. CNIPA does not approve assignment applications that may cause misidentification or confusion or have other adverse effects. Assignment is made by trademark number and covers all classes; a single class cannot be assigned separately. The official documents prevail for the specific examination result.

A trademark cannot be assigned for only some of its items.

A trademark at the preliminary examination stage can be assigned.

An assignment application can be filed for a trademark that is still pending.

Under Article 42 of the Trademark Law and Articles 31 and 32 of the Implementing Regulations of the Trademark Law:

1. Where a registered trademark is assigned, the assignor and the assignee shall jointly complete the assignment procedure at CNIPA. Both parties are applicants.

2. Where a transfer arises from inheritance, a company's merger, acquisition or restructuring, or another cause, the party receiving the exclusive right to the registered trademark shall complete the transfer procedure at CNIPA with the relevant supporting documents or legal instruments.

3. Where the exclusive trademark right is transferred under a court judgment, the transfer procedure shall also be completed.

If you file on paper, you must also submit the Application for Assignment/Transfer of a Trademark Application/Registered Trademark; notarization is not required.

The consent to assignment shall be sealed and signed by both parties (a legal person or other organization shall apply its seal and also have it signed by its person in charge or legal representative).

The consent to assignment requires the legal representative's signature.

In this situation a change application must be filed, and all valid trademarks in the company's name must be changed together. The change and assignment applications can be filed at the same time.

It can be filed online. Adding a co-owner requires a trademark assignment application.

An assignment application may be withdrawn if both parties agree before CNIPA approves it.

Where the assignment was handled through an agency, the withdrawal shall be handled through the original agency.

There is no template.

In this situation a trademark transfer can be filed.

There are the following cases. Ordinary dissolution procedure. First, where the trademark was disposed of during liquidation, the successor files the transfer and must provide the following: the notice approving dissolution registration, proving that the corporate legal person has been dissolved; the liquidation committee recordal notice issued by the registration authority; the dissolution liquidation report on file with the registration authority; and other documents proving the right to succeed to the trademark.

The evidence that the trademark was disposed of during liquidation may be a contract signed between the party and the liquidation committee during the liquidation period, or a provision in the liquidation report on ownership of the trademark right.

Second, where the trademark was not disposed of during liquidation, the following must additionally be provided: proof that the trademark right was not disposed of during liquidation and is indeed an asset omitted from the liquidation.

Generally, first provide the liquidation report attached to the dissolution registration (the copy on file with the administration for industry and commerce), which should contain nothing expressly disposing of the trademark. On that basis, since a liquidation report usually states that all claims and debts have been fully disposed of, the liquidation committee members and all investors must issue an undertaking and guarantee confirming that they never disposed of the trademark right during liquidation and that they are willing to bear joint and several liability for that guarantee;

(2) Proof that all investors consent to the assignment of the trademark right: generally, provide the list of investors issued by the registration authority; copies of all investors' ID cards; and a document consenting to the assignment signed by all investors.

Simplified dissolution procedure. Besides proof of the company's simplified dissolution, the evidence to provide is: proof that the trademark is an asset omitted from the liquidation, namely all investors certifying that the trademark right was not disposed of during liquidation, that it is indeed an asset omitted from the liquidation, and that they are willing to bear joint and several liability for this guarantee; and a written document proving that all investors consent to the assignment of the trademark right, for which generally provide the list of investors issued by the registration authority, copies of all investors' ID cards, and a document consenting to the assignment signed by all investors.

When filing a trademark transfer, if the assignor cannot apply its seal, the assignee shall submit supporting documents or legal instruments showing that it is entitled to receive the trademark.

For example, where a transfer arises from a company's merger, acquisition or restructuring, the merger, acquisition or restructuring documents and a certificate issued by the registration authority shall be submitted. The merger, acquisition or restructuring documents shall show that the assignee succeeds to the trademark right, and the registration authority shall certify the relationship between the original registrant and the assignee and the fact that the original registrant no longer exists.

Where a transfer arises from a court judgment, the legal instrument issued by the court shall be submitted, and the name of the party subject to enforcement and the name of the company receiving the exclusive right to the registered trademark on that instrument shall match the assignor's and assignee's names in the application.

The application documents to submit are:

(1) the Application for Assignment/Transfer of a Trademark Application/Registered Trademark;

(2) copies of the assignor's and the assignee's identity documents, confirmed by seal or signature (such as a company's duplicate business license, or a natural person's ID card, Hong Kong/Macao resident residence permit, Taiwan resident residence permit, passport or the like);

(3) where a trademark agency is engaged, the powers of attorney issued by both the assignor and the assignee;

(4) for a transfer application where the trademark registrant has died or ceased to exist, its identity document and a power of attorney issued by it need not be submitted, but the party receiving the trademark shall, in accordance with the law, submit the relevant supporting documents or legal instruments proving its right to succeed to the trademark right;

(5) where application documents are in a foreign language, a Chinese translation confirmed by the seal or signature of the applicant, the agency or a translation organization shall also be provided.

Examination of a trademark assignment takes around 4-6 months.

No.

Under Article 43 of the Trademark Law and Article 69 of the Implementing Regulations of the Trademark Law, where a party licenses another to use its registered trademark, the licensor shall record the license with CNIPA within the term of the license contract and submit the recordal materials. The recordal materials shall state the licensor and licensee of the registered trademark, the license term, the license type, the scope of licensed goods or services, and other matters. Where the licensor or licensee changes its name, the licensor terminates the license early, or the license recordal is withdrawn, the corresponding procedure may be completed with CNIPA.

It corresponds to a single licensee.

A separate application must be filed and a separate fee paid.

The license term may not exceed the validity period of the registered trademark, may not conflict with the period of existence of the licensor or licensee as civil entities, and may not conflict with the time the licensor (registrant) obtained the trademark right.

In this situation the trademark license recordal terminates, and a new recordal application must be filed.