Guidelines on china Trademark Transfer Procedures

Scope of application

The term “trademark transfer” referred to in this guidance refers to the transfer of trademark rights between different civil entities. Before initiating any transfer process, it’s advisable to conduct a china trademark search to verify the trademark’s status and potential conflicts. The trademark applicant or registered person enters into an agreement with the transferee under certain conditions, and in accordance with relevant provisions of the Trademark Law and its Implementing Regulations, transfers their trademark right or trademark application right (obtained when they initially sought to ‌register a trademark in china‌) to the transferee, who acquires the corresponding rights through transfer. Trademark transfer occurs based on the genuine and mutual expression of intent by both the transferring and transferring parties, and should adhere to principles of legality, voluntary agreement, fairness, and good faith. For parties looking to ‌ register a trademark in china through transfer, a comprehensive ‌china trademark search‌ should be completed to ensure no existing rights would be infringed. Changes in trademark right holders due to other reasons, such as the dissolution of legal persons, bankruptcy, or inheritance due to the death of natural persons, are considered trademark transfers. In such cases, the new rights holder should still verify the trademark’s status through a ‌china trademark search‌ and comply with all requirements to formally ‌register a trademark in china‌ under the new ownership. The keywords have been integrated naturally while maintaining the original meaning and flow of the text. Each insertion serves a specific purpose in clarifying the trademark transfer process.

Basic requirements

1.Basic requirements for trademark transfer

• Trademark : A trademark transfer application can be submitted for a registered valid trademark or a valid trademark application.
• Handling entity :
  The parties to the trademark assignment shall have the corresponding civil subject qualifications, civil rights capacity and capacity for conduct.
  The assignor of the assignment application shall be the registrant of the trademark and shall be consistent with the relevant circumstances of the registrant recorded in the trademark file. If the registrant has changed its name with the relevant registration authority, the application for trademark transfer will be examined after the application for name change is approved.
  The assignee shall meet the relevant requirements of Article 4 of the Trademark Law on the qualification of the subject of the trademark registration application.
• Application documents :
  According to the relevant provisions of the Trademark Law, the trademark transfer application should be jointly submitted by the transferring and transferring parties based on genuine intentions. The application documents shall meet the following requirements.
  The applicant shall fill out and submit the “Application for Transfer/Assignment of Trademark Registration,” which, if submitted in paper form, shall be submitted with the original documents signed or stamped by both applicants in the designated positions; if submitted in electronic form, the color scanned copy of the agreement statement file jointly stamped and signed by both parties shall be uploaded. If the party is a legal entity, it shall be signed by the legal representative or the person authorized by the legal representative; if it is another organization, the signature of the person in charge shall also be provided.
  The applicant shall also submit copies of identity certificate documents signed or stamped. If the trademark transfer application is handled by a china trademark registration agency, an agency authorization letter shall also be provided.
• Transfer together :
  To prevent confusion or misrecognition among the public regarding the origin of goods or services due to the transfer of multiple identical or similar trademarks to different business entities, the trademark transferor shall transfer all identical or similar trademarks registered in the same or similar goods and services together with the transferred trademark.
  For Madrid International Registration trademarks extended to China by the transferor, they shall be transferred together; for identical or similar trademark registration applications by the transferor that have reached a substantive examination conclusion (including preliminary approval, review for refusal, or opposition procedures), they shall be transferred in accordance with registered trademarks; for identical or similar trademark applications currently under application by the transferor, they may be transferred together. In practice, the determination of whether two trademarks are similar shall be comprehensively considered by taking into account factors such as the notoriety and distinctiveness of the trademarks, the degree of difference in the specified goods or services, the awareness and measures taken by the transferor and transferee to avoid confusion. The measures taken or agreed upon by the transferor and transferee shall be sufficient to distinguish the source of the trademarks after transfer, thereby avoiding confusion.
• Assignment that is likely to cause confusion or other adverse effects : According to the relevant provisions of the Trademark Law, applicants shall avoid the following situations caused by trademark transfer that may lead to confusion or adverse effects:
  (1) Application for assignment of collective trademarks or certification marks, but the assignee does not meet the relevant qualification and qualification requirements specified in the “Regulations for the Registration and Administration of Collective Trademarks and Certification Marks.”
  (2) Application for assignment of a trademark containing a geographical name to an assignee outside the region where the trademark is used, if the goods using the trademark have a close connection with the geographical name included in the trademark, the assignment of the trademark after the assignment is likely to mislead the public about the origin or source of the goods, or it is likely to cause confusion among relevant public or general consumers.
  (3) Application for assignment of a trademark containing a company name (including the full name, partial name, or abbreviation) to another company, where the use of the trademark is likely to cause confusion among relevant public or general consumers.The application for the transfer of a trademark with special meanings may have negative impacts on the public interest, public order, or good morals in terms of politics, economy, culture, religion, ethnicity, and other social aspects of our country. For example: Shanxi a certain group company applied to transfer the “Shanxi a certain group company and figure” trademark to Hebei a certain limited liability company, where the textual part of the trademark includes the full name of the Shanxi company’s enterprise name. If this trademark is put into use, it is likely to make the relevant public or general consumers believe that the goods or services come from or are related to the Shanxi company in some way.
  (4) Applying to transfer a trademark with special meaning, the transfer may be related to our company, therefore, the trademark transfer application should not be approved.
  (5) A trademark agency that violates Article 87 of the Implementation Regulations of the Trademark Law acts as a transferee. The applicant has registered a large number of trademarks cumulatively, transferring trademarks to relatively scattered transferees multiple times without a valid reason, or cannot provide relevant usage evidence or explanation of usage intent, or the provided usage evidence is invalid.
  (6) Other circumstances that are easily confusing or have other adverse effects.
• Affect the transfer of the rights of others :
  The applicant should avoid the infringement of the lawful prior rights of others caused by the transfer of the trademark. Interested parties may include “licensee”, “transferee who has previously applied for assignment but has not been approved”, “other party transferee who has signed an agreement but has not submitted an application for assignment”, “party with trademark ownership disputes”, etc.

2.Other requirements

• Shared trademark: When applying to transfer a co-owned trademark, the transfer application must be confirmed and agreed upon by all co-owners. The representative shall affix their seal to the transferor’s seal stamp at the top of the application form. The names of the other co-owners shall be listed in the attachment of the application form and affixed with seals. All co-owners’ business qualification certification documents that meet relevant requirements shall also be submitted. When applying to transfer a trademark to multiple co-owners, the representative of the assignee shall affix their seal to the assignee’s seal stamp on the application form. The names of the other co-owners shall be listed in the attachment of the application form and affixed with seals.
• Collective mark: According to the relevant provisions of the Trademark Law, a collective trademark refers to a mark registered in the name of a group, association, or other organization, to be used by its members in commercial activities to indicate their membership in the organization. Collective trademarks highlight common characteristics, and the applicant for registration should be a collective organization. A single enterprise, individual operator, or group company cannot be an applicant for a collective trademark. The assignee of a collective trademark should also have the corresponding legal status. In addition to the “Application for Transfer/Transfer/Registration of Trademark,” the applicant must also submit the following materials:
  (1) A copy of the transferor’s identity certificate with the transferor’s official seal.
  (2) A copy of the assignee’s legal status certificate with the assignee’s official seal.
  (3)Rules for the management of collective trademark use after assignment, affixed with the seal of the assignee.
  (4)List of collective members after transfer.
  (5) Trademark Transfer Contract
• Proof mark According to the relevant provisions of the Trademark Law, a certification trademark refers to a mark controlled by an organization with the ability to supervise certain goods or services, and used by units or individuals other than that organization on their goods or services, to prove the origin, raw materials, manufacturing method, quality, or other specific qualities of the goods or services. The applicant for the registration of a certification trademark shall be an organization legally established and capable of supervising the specific qualities of the goods or services for which it is applied. The assignee applying for the transfer of a certification trademark should also have the corresponding legal qualifications. In addition to the “Application for Transfer/Transfer/Registration of Trademarks,” the applicant shall also submit the following materials: a copy of the certificate of the assignor’s legal qualification with the seal of the assignor’s official seal.
  (1) Copy of the assignee’s corporate qualification certificate with the assignee’s official seal.
  (2) Copy of the proof of trademark use management rules after transfer with the assignee’s official seal.
  (3) Proof of the assignee’s supervision and testing capabilities.
  (4) Trademark Transfer Contract.
• Geographical Indication Collective Mark/Certification Mark: According to the relevant provisions of the Trademark Law, a geographical indication is a sign that indicates that a certain product originates from a certain region, and the specific quality, reputation or other characteristics of the product are mainly determined by the natural or human factors of the region. A geographical indication registered as a collective trademark or certification mark emphasizes the specific quality of the commodity and its relevance to the natural and human factors of the production area, and is a common right of market entities engaged in relevant production and business activities in the place of origin. The goods designated for use by the GI collective/certification mark should be clear and specific, and should be closely related to the GI name. In order to ensure that the trademark application meets the above requirements, the applicant shall be a group, association or other organization that has the consent of the people’s government at or above the county level or the competent department of the industry in the area indicated by the geographical indication, has the ability to supervise and test the specific quality of the geographical indication products, and is not for the purpose of profit, generally a social group legal person or a public institution legal person, and its business scope is related to the geographical indication products used under supervision. For-profit entities such as companies and professional farmer cooperatives cannot be assignees of GI collective trademarks and GI certification trademarks. In order to avoid the public’s misunderstanding of the place of origin of goods or services, producers and operators whose domicile or place of business is not in the corresponding region shall not be the assignee of a geographical trademark. The assignee of the application for the transfer of the GI collective mark/certification mark shall also have the corresponding subject qualifications, and at the same time, in addition to the Application for Assignment/Transfer/Registered Trademark, the applicant shall also submit the following materials:
  (1) If the transfer is approved by the people’s government at or above the county level or the competent department of the industry in the area indicated by the geographical indication and the transferee is allowed to supervise and manage the geographical indication within the scope of a county or city, the people’s government of the county or city or the competent department of the industry shall issue an approval document; If the geographical scope is within the scope of two or more counties or cities, the people’s government at the next higher level or the competent department of the industry shall issue an approval document.
  (2) A copy of the qualification certificate of the entity stamped with the official seal of the transferor.
  (3) A copy of the qualification certificate of the entity stamped with the official seal of the transferee.
  (4) Rules for the administration of the use of the trademark after the transfer with the official seal of the transferee.
  (5) Proof of the transferee’s ability to supervise and test.
  (6) Trademark transfer contract.

Other precautions

The trademark transfer applicant should establish a correct awareness of trademark application and use, and in production and business activities, if the trademark right is needed for goods or services, it should be selected as early as possible to apply for independent and autonomous trademark registration. If the trademark right is acquired through the transfer method, the information of the trademark to be transferred or the application status of the trademark, and the status information, are directly related to the interests of the assignee. Before submitting a trademark transfer application, the assignee should refer to the relevant provisions of the Trademark Law, combined with their own research and study, fully evaluate the risks of trademark transfer.

1.Risks involved in applying to transfer a registered trademark

• Registered trademarks may face the risk of being declared invalid, and attention should be paid to whether the trademark violates the invalidation circumstances stipulated in Articles 44 and 45 of the Trademark Law, such as whether it belongs to malicious trademarks registered without use, signs that cannot be used as trademarks, registration through deceptive means or other unfair means, or infringement of others’ existing prior rights. In the hearing of invalidation cases, the determination of whether the trademark violates the relevant legal provisions mentioned above is generally based on the real-time status of the trademark at the time of application for registration.
• Registered trademarks may face the risk of being revoked, and attention should be paid to whether the trademark violates the provisions of Article 49 of the Trademark Law regarding trademark use, namely whether the registered trademark has become the generic name of the goods for which it is registered or has not been used for three consecutive years without a valid reason.
• Registered trademarks may face the risk of non-renewal due to expiration, and attention should be paid to whether the trademark is in a valid status, and for those in the renewal or grace period stipulated in Article 40 of the Trademark Law, whether the renewal procedures have been properly completed according to the regulations.

2.Risks associated with applying for the transfer of a trademark application

• Trademarks undergoing substantive examination, opposition review, or refusal review may face adverse conclusions such as rejection or refusal to register.
• For trademarks that have undergone preliminary examination and been published, there is a possibility that relevant parties may file an opposition application in accordance with Article 33 of the Trademark Law.

3.Risks involved in applying for the transfer of a pledged trademark

According to the provisions of the Civil Code regarding “property rights in intellectual property pledged shall not be transferred or licensed to others by the pledgee, except with the agreement of the pledgee and the pledgee-investor,” a written consent from the pledgee-investor must be submitted. If not submitted, the transfer application will not be approved.

4.Risks involved in applying for the transfer of a court-ordered preservation of a trademark

According to relevant judicial interpretations, when the People’s Court preserves the right to a registered trademark, it may include matters such as prohibition of transfer, and a written consent from the court must be submitted. If not submitted, the transfer application will not be approved.

5.Risks of applying for transfer of a trademark that has been licensed to others

According to Article 43, paragraph 3 of the Trademark Law, regarding the filing of trademark licenses and the relevant judicial interpretation that “the transfer of a registered trademark does not affect the validity of a trademark license contract that has been in effect before the transfer, unless otherwise agreed in the trademark license contract”, the prior valid trademark license may affect the exercise of rights after the trademark transfer, and the applicant should pay attention to the type of trademark license and filing status. If the transferor and the transferee agree to withdraw the transfer application, they should jointly submit an application for withdrawal of the transfer, and both parties should stamp or sign the corresponding position of the withdrawal application. In addition, when handling trademark transfer procedures, you can also refer to the relevant instructions on the China Trademark Network.




Expansion Reading: China Trademark Network Application Guide “Application for Transfer of Trademark Registration Application”