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COPYRIGHT BKIP 2020
What should be paid special attention in China trademark assignments? Apr 2020
Assignments of trademarks are essentially assignments of trademark rights. In recent years, with a surge in the number of trademark applications, it has become more and more difficult to get approval for the trademark registration in China. As a result, an assignment of trademark has become a viable option for entrepreneurs. However, in the process of an application of an assignment, what concerns both parties the most is whether the assignment might get disapproved. So, what might happen during the assignment process?
First, inconsistency in seals and signatures are common issues. The examination of the process of trademark assignment begins with an examination of the authentication of the signature and seal, that is, the signature and official seal of the legal person. If the signature and seal are inconsistent with the signature and seal or record with which the trademark was initially applied for, the examiner will first demand an explanation for the reasons of inconsistency. Then, he will request a contract of assignment signed by both parties or an owner's statement of assignment be notarized, which shall be examined with the assistance of the local Notary Public Office. The notarial certificate issued shall be submitted to the Trademark Office, it is only after which that an approval shall be granted to the assignment. If it cannot be provided within the stipulated time, it shall be regarded as abandoned and the assignment shall not be approved.
Second, regarding cancellation of business license of a corporate legal person, if an enterprise reaches the end of its life and the trademark under its name still has some value, it is recommended that the best option is to assign the trademark before the cancellation. If it is not assigned out before that, a liquidation report filed with the competent authority can be provided within one year after the cancellation to determine the ownership of the trademark, otherwise it will become a "dead mark".
Third, there maybe another situation where a trademark is assigned: scenarios where the trademark becomes invalid during the process of assignment. First, trademark can be assigned immediately after application. Nonetheless, if the trademark application is rejected, then it naturally follows that an assignment would be invalid. Second, if the trademark is being invalidated, revoked or cancelled during the assignment process, then the assignment will be automatically ceased and will not be approved subsequently.
Fourth, if the owner of the trademark is an individual industrial and commercial household, but the individual business has already been cancelled and it is also difficult to assign the trademark under the owner’s name at that stage, it is recommended to try assigning the cancellation certificate issued by the local industrial and commercial department to the original person-in-charge of the individual business. If the owner is an individual, but the ID card number is inconsistent with the current one, or the name is a former name (with the ID card number being identical), correction will also be required. The individual owner can reach the Public Security Bureau at his place of household registration for issuing his corresponding household registration certificate, which shall be submitted to Trademark Office, after that application for trademark assignment shall be approved.
Fifth, the final important point is that when the trademark is applied for assignment, all trademarks of the same or similar groups under the owner’s name must be submitted all together for assignment. If only one or a few of them are assigned, it has to be rectified. Failure to comply will be regarded as an abandonment and the assignment would fail.
In short, it is necessary to be very careful when assigning trademarks, as it also takes three to five months for the assignment process. Hope the general public can avoid unnecessary troubles or improve the application materials, saving unnecessary time to complete the assignment.