Ⅰ. Legal Basis and Application Conditions
According to Article 42 of China's Trademark Law and Articles 31 and 32 of the Regulations for the Implementation of the Trademark Law:
1. Where a registered trademark is assigned, the assignor and the assignee shall jointly go through the procedures for the assignment of the registered trademark at the Trademark Office. Both parties are applicants.
2. In case of a transfer due to inheritance, business combination, merger or restructuring, the party accepting the exclusive right to use the registered trademark may go through the procedures for the transfer of the registered trademark.
3. Where the exclusive right to use a trademark is transferred according to the judgment of the court, the transfer procedures shall also be handled.
Ⅱ．Necessary Documents for Recording the Assignment/Transfer
1. A format document "application form for assignment / transfer for registered/applied trademark" issued by the Trademark Office shall be filed.
2. Copies of the identity documents of the assignor and the assignee (e.g. copy of business license of the enterprise, ID card of natural person / residence card of Hong Kong and Macao residents / residence card of Taiwan residents / passport, etc.)
3. Where a trademark agency is entrusted to handle the matter, the power of attorney of both the assignor and the assignee shall be submitted
4. If the trademark registrant has been terminated, there is no need to submit the identity document and power of attorney of the assignor, and the application form does not need to be sealed/signed by the assignor. However, relevant certification documents or legal documents shall be submitted to prove that it has the right to inherit the corresponding trademark rights. For example, in case of trademark transfer due to consolidation, merger, or restructuring, the enterprise shall submit the documents of consolidation, merger or restructuring and the certificate issued by the company registration department; in case of trademark transfer due to court judgment, the enterprise shall submit the legal documents issued by the court. If the registrant is a company that has been cancelled, it is necessary to provide the liquidation documents related to the disposal of trademark rights if there is a liquidation process, and if there is no liquidation process, it is necessary to provide all investors' approval documents of the trademark transfer.
5. If any of above document is in a foreign language, the Chinese translation shall also be provided.
Ⅲ. Some Notes for Trademark Assignment/Transfer
The following are some notes for trademark assignment, which are also applicable to the case of transfer.
1. Assignment Contract is not required for recording the assignment, but it is suggested that both parties sign a contract and notarize it to prevent disputes in the process of assignment.
2. The trademark with a license record can be assigned, and a new license record shall be filed after the assignment.
3. The application for assignment of a registered trademark shall not be likely to cause misunderstanding, confusion or other adverse effects. All the same or similar trademarks on the same or similar goods of the same registrant should be assigned at the same time.
4. A registered trademark with multiple classes cannot be transferred in a single class, and all classes need to be transferred at the same time.
5. The application for assignment may be withdrawn if both parties reach an agreement through consultation before it is approved by the Trademark Office.
6. After the assignment of the registered trademark is approved, it shall be announced. The assignee shall enjoy the exclusive right to use the trademark as of the date of the announcement.
7. The entire process of trademark assignment includes: submitting necessary documents of the assignment application to the Trademark Office → passing the formal examination of the Trademark Office → issuing the payment notice by the Trademark Office → issuing the approval certificate after the payment is completed. The entire process usually takes 4-6 months.
8. After the exclusive right of trademark is pledged, 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. When applying for trademark assignment, if the parties are in the following special circumstances, they can request an accelerated examination and provide relevant evidence materials: (1) the enterprise applies for listing; (2) the mortgage financing of trademark pledge; (3) the Custom recordal for trademark right; (4) the trial of trademark right confirmation cases in administrative procedures; (5)the trial of litigation cases in judicial procedures; (6) products entering shopping malls and supermarkets or e-commerce platforms; (7) other reasonable reasons that required accelerated examination.
10. A pending trademark application can also be assigned, the conditions and precautions of which are consistent with those for a registered trademark.