Overviews on Assignment/Transfer of Chinese Trademarks

China is the most populous country in the world. Therefore, this is a potential destination for businesses wishing to expand, develop and establish relationships and cooperation with foreign businesses. However, in the process of expansion, businesses have found that there are many inadequacies, cumbersome procedures, and troubles in the transfer process of trademarks in China. Accordingly, this article will give the overviews on Assignment/Transfer of Chinese Trademarks.

Ⅰ. Legal Basis and Application Conditions

Article 42 of China’s Trademark Law, as well as Articles 31 and 32 of the Trademark Law’s Implementation Regulations stipulate:

1. When a registered trademark is assigned, the assignor and the assignee shall go through the trademark assignment procedures at the Trademark Office together. Applicants include both parties.
2. The party receiving the exclusive right to use the registered trademark may go through the processes for transferring the registered trademark if the transfer is due to inheritance, business combination, merger, or restructuring.
3. The transfer processes shall also be addressed when the exclusive right to use a trademark is transferred according to a court ruling. 

Ⅱ. Required Documents to Record the Assignment/Transfer

1. File a format document “application form for assignment/transfer for registered/applied trademark” that The Trademark Office has released.
2. Copies of the assignor’s and assignee’s identity papers (e.g., copy of the enterprise’s business license, natural person’s ID card/Hong Kong and Macao residents’ residence cards/Taiwan residents’ residence cards/passport, etc.)
3. The power of attorney of both the assignor and the assignee must be presented when the issue is handed to a trademark agency.
4. The assignor’s identification document and power of attorney (POA) are not required if the trademark registrant has been terminated, and the application form does not need to be sealed or signed by the assignor. Relevant certification documents or legal documents, however, shall be filed to demonstrate that it has the legal right to inherit the related trademark rights.

• For example, in the case of trademark transfer as a result of consolidation, merger, or restructuring, the enterprise must submit the documents relating to the consolidation, merger, or restructuring, as well as the certificate issued by the company registration department.
• In the case of trademark transfer as a result of a court judgment, the enterprise shall file the legal documents released by the court.
• If the registrant is a company that has been dissolved, the liquidation paperwork relating to the disposition of trademark rights must be provided if there is a liquidation process.
• If there is no liquidation process, all investors’ permission documentation for the trademark transfer should be provided.

5. If any of the documents listed above are in a foreign language, a Chinese translation shall be given as well.

Ⅲ. Some Considerations for Trademark Assignment/Transfer

Some considerations for trademark assignment that also apply to the case of transfer include:

1. Although an Assignment Contract is not necessary for documenting the assignment, it is recommended that both parties sign and notarize it to avoid disagreements throughout the assignment process.
2. The registered trademark with a license record can be assigned, and following the assignment, a new license record shall be submitted.
3. The application for a registered trademark transfer shall not be likely to produce misinterpretation, confusion, or other bad effects. At the same time, all identical or similar trademarks on the same or similar items of the same registrant shall be assigned.
4. A registered trademark with several classes cannot be transferred in a single class; instead, all classes must be transferred simultaneously.
5. The assignment application may be withdrawn if both parties reach an agreement through consultation before the Trademark Office approves it.
6. The registered trademark assignment will be disclosed after it has been authorized. As of the date of the announcement, the assignee will have the sole right to use the trademark.
7. The entire trademark assignment process entails: filing the assignment application’s necessary documents to the Trademark Office → passing the Trademark Office’s formal examination → publishing a payment notice from the Trademark Office → providing an approval certificate once the payment is done. Ideally, the full procedure takes 4-6 months.
8. After pledging the exclusive right of trademark, the pledgor shall not assign the trademark in principle but the mark can be assigned if the pledgor and the pledgee agree through consultation.
9. If the parties are in the following special circumstances while applying for trademark assignment, they can ask an expedited examination and give related proof materials:

• The enterprise application for listing.
• The mortgage financing of trademark pledge.
• The Customs recorded for trademark rights.
• The administrative procedures trial of trademark right confirmation cases.
• The trial of litigation cases in judicial procedures.
• Goods entering shopping malls, supermarkets, or e-commerce platforms.
• Other legitimate reasons for expedited examination.

10. A pending trademark application can also be assigned, the conditions and precautions of which are similar with those for a registered trademark.

(Source: DEQI Intellectual Property Law Corporation)

***Other Articles***

– You could see How To Register Trademark in China here.

– You could visit here to see Procedure of Trademark in China.

– You could visit here to check Required documents of filing trademark in China.

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