Can a trademark transfer contract specify a time limit?
What is a trademark transfer contract? The owner of a trademark transfers his trademark to another person in accordance with legal procedures, and the transferee enjoys the exclusive right to the trademark. The trademark use right transfer contract may specify a time limit.
1. Review of the validity of the trademark transfer contract:
Trademark transfer contract The validity review mainly examines whether the contract is invalid or revocable, whether the transferred trademark is a trademark frozen by the people's court and a trademark that has been registered as a pledge:
1. Examine whether there are any circumstances specified in Article 52 of China’s Contract Law in the contract.
Article 52 of the "Contract Law" If any of the following circumstances occurs, the contract is invalid:
(1) One party concludes a contract by means of fraud or coercion, harming national interests;
(2) Malicious collusion, harming the interests of the country, the collective or a third party;
(3) Covering illegal purposes in legal forms;
(4) Damaging social and public interests;
(5) Violation of mandatory provisions of laws and administrative regulations.
"Contract Law" Article 54 of the following contracts, one party has the right to request the people's court or arbitration institution to change or cancel:
(1) The contract was concluded due to a major misunderstanding;
(2) The contract was obviously unfair when it was concluded.
If one party uses fraud, coercion or takes advantage of others' danger to cause the other party to enter into a contract against its true intention, the injured party has the right to request the people's court or arbitration institution to change or cancel the contract.
If the party requests a change, the people's court or arbitration institution shall not revoke
2. Examine whether the transferred trademark has been frozen by the people's court trademarks and trademarks that have been pledged and registered. During the freezing period and the pledge period, the trademark shall not be transferred without the consent of the people's court and the pledgee. Otherwise, the trademark transfer contract will be invalid.
2. Review the terms of the trademark transfer contract:
1. The subject of the contract. The transferor of the contract should be Enterprises, institutions, social groups, individual industrial and commercial households, individual partnerships, and foreigners or foreign enterprises that legally enjoy the exclusive right to use trademarks. The transferees are limited to enterprises, institutions, social groups, individual industrial and commercial households, individual partnerships, and foreigners. Or foreign enterprises.
2. Basic information about the trademark, including trademark name, pattern, country, registration time, registration number, and the goods or services for which the registered trademark is approved category and the name of the goods or services.
3. License status of the trademark right. Before the trademark right is transferred, it is often the case that the transferor has already obtained the right to use the trademark. The situation of licensing a third party to use. In order to protect the interests of the transferee, the transferee should clearly understand the rights status of the transferred trademark before signing the contract, and should clearly stipulate the circumstances under which the transferred trademark is licensed to be used, and the transferee's Whether the transferee still needs to bear the relevant rights and obligations of the licensed use after the contract is signed.
4. After the trademark right is transferred, the transferee's authority should be clearly agreed The types of goods (or categories and names of services) that can use the trademark and the geographical scope in which the trademark can be used.
5. The nature of the transfer of trademark rights. It should be clear Agree on whether the transfer of trademark rights is a permanent transfer of trademark rights or a non-permanent transfer of trademark rights. Depending on the nature of the transfer, the transferee shall enjoy different rights periods.
6. Time for transfer of trademark rights. Depending on the nature of the transfer of trademark rights, the time for transfer is also different. For permanent transfer of trademark rights, it is generally agreed that the trademark transfer contract will be completed after the trademark transfer and change registration procedures are completed. , the trademark right is officially transferred to the transferee. For non-permanent transfer of trademark rights, theAgree on the transfer period and agree that the transferor will take back the trademark rights on the expiration date of the transfer period.
7. Transfer fees and payment methods for trademark rights transfer. This clause should clearly stipulate the transfer fee, payment method and payment time. If it is foreign-related business, the currency exchange rate and calculation method must also be taken into consideration.
8. Handling trademark transfer procedures. It should be clearly agreed that both parties should jointly submit an application for transfer of a registered trademark to the Trademark Office, and the application procedures for transfer of a registered trademark shall be handled by the transferee. In addition, it should be agreed on who should bear the costs of changing the registrant.
9. Guarantee of product quality. The transferor of trademark rights requires the transferee to ensure that the quality of the products marked by the trademark is not lower than the original level of the transferor. The transferor should provide samples of the goods to the transferee and provide technical guidance or know-how for manufacturing such goods (can be In addition, sign a technology transfer contract); product instructions, product packaging, product maintenance methods, and, if necessary, a list of customers who frequently purchase the product should also be provided. If the transfer is non-permanent, the transferor can supervise the transferee's production and has the right to inspect the transferee's production conditions and product quality.
10. Confidentiality obligations of both parties. It should be clearly agreed that both parties have the obligation to keep the other party’s production and business operations confidential.
11. Liability for breach of contract is an effective means to ensure the performance of debts and to protect and relieve the legitimate rights and interests of creditors. When parties to a contract fail to perform their contractual obligations or perform their contractual obligations inconsistently with the agreement, they will bear corresponding liability for breach of contract. The forms of liability for breach of contract include continuing to perform the contract, taking remedial measures, compensating for losses, paying liquidated damages, etc.
Notes on liability for breach of contract:
① Various circumstances under which liability for breach of contract is not clearly agreed upon, Therefore, the breach of contract liability clause cannot be applied.
② In the form of breach of contract to pay liquidated damages or damages, there is no basis for calculating liquidated damages or damages, making the breach of contract clause unoperable. .
③ Misunderstanding the termination of the contract as a form of assuming liability for breach of contract or mistakenly believing that the contract can be terminated as long as there is a breach of contract
④ If the agreed liquidated damages are excessively higher than the losses caused, the parties may request the people's court or arbitration institution to appropriately reduce it. The law stipulates that “if the liquidated damages agreed upon by the parties exceed one hundred percent of the losses caused,If the amount is 30/30, it can generally be determined as "excessively higher than the loss caused" as stipulated in the second paragraph of Article 114 of the Contract Law. ”
12. Dispute resolution clauses generally stipulate that the two parties will negotiate amicably first, and if the negotiation fails, they will then be resolved through legal channels:
① If litigation is adopted, all parties shall try their best to agree on the jurisdiction of the court where they are located based on their own positions.
② If adopted To solve the problem through arbitration, each party shall try its best to agree on the jurisdiction of the arbitration institution in its own location based on its own position.
13. Legal applicable clauses, for both parties in different countries In this situation, all parties should try their best to agree on the application of domestic laws based on their own positions.
3. Common legal risks in trademark transfer contracts:
(1) The transferor should pay attention
1. Make it clear that the transferee is limited to enterprises and institutions , social groups, individual industrial and commercial households, individual partnerships, and foreigners or foreign enterprises. Natural persons who are not permitted to engage in business activities in accordance with the law are restricted as transferees of trademark rights.
2. The trademark transfer fee should be paid in installments as much as possible. If part of the fee is paid when the contract is signed, the remaining part will be paid after the trademark transfer is approved and announced. It should be avoided to agree to a one-time payment after the trademark transfer is approved and announced.
(2) The transferee should pay attention
1. It should be clearly stipulated in the contract that the transferor shall The transferred trademark legally enjoys the exclusive right to use the trademark, and the exclusive right to the trademark is valid. The trademark registration certificate should be included as an attachment to the contract. It should be reminded that the transferee cannot rely solely on the trademark registration certificate provided by the transferor, and must also investigate the transfer Whether the party is the trademark registrant. In addition, you should know whether the nominal address of the trademark registrant is consistent with the name and address on the business license of the transferor. If the name and address on the business license of the transferor are consistent with the name and address on the registration certificate of the transferred trademark, If the address does not match, the Trademark Office will reject the transfer application.
2. In order to prevent different producers or service providers from using the same trademark on the same type of goods or services confusion and misunderstanding by consumers. It should be clearly agreed that when the trademark owner transfers its registered trademark, it should be used together with the trademark on the same or similar goods or services.Other identical or similar trademarks registered on the website are transferred to the same assignee.
3. According to current regulations, a later trademark transfer cannot affect the validity of an earlier license. The licensee can continue to use the trademark during the validity period of the license, thereby adversely affecting the transferee of the transferred trademark. Therefore, the licensing status of trademark rights should be clearly agreed upon.
(3) Both the transferor and the transferee should pay attention
1. According to China’s Trademark Article 42 of the Law stipulates, “After the transfer of a registered trademark is approved, it shall be announced. The transferee shall enjoy the exclusive right to use the trademark from the date of announcement.” Since the transferee has not When obtaining the exclusive right to use a trademark, the rights and obligations of both parties during this period should be clearly agreed upon.
2. When going through the procedures for transferring a registered trademark, the transferor and the transferee should jointly submit an application for transfer of a registered trademark to the Trademark Office.
The above content is the relevant answers. If you have other legal questions, you can consult the relevant lawyers on the Legal Savior Network.
