The concept of trademark transfer
Trademark transfer is a trademark transfer that the trademark registrant makes in accordance with legal procedures during the validity period of the registered trademark. , the act of transferring the exclusive right to use a trademark to another party. Trademark transfer generally takes the following forms: contractual transfer, inheritance transfer, and transfer due to administrative orders.
The transfer forms of registered trademarks include contractual transfer and inheritance transfer. Contractual transfer refers to the transfer of a registered trademark by signing a transfer contract between the transferor and the transferee; inheritance transfer refers to the death or incapacity of an individual or an individual business owner registered in accordance with the law, and the legal heir inherits his or her registered trademark. .
In practice, a large number of transferred registered trademarks are transferred and registered by contract. To transfer a registered trademark, certain procedures must be completed in accordance with the law, and the transfer registration must be approved by the Trademark Office before the transfer registration can take effect. Transferring a registered trademark without going through the relevant procedures with the Trademark Office is an act of self-transfer of a registered trademark. According to the provisions of Article 44 of the Trademark Law, one will be subject to administrative penalties. In serious cases, the registered trademark may be revoked.
Trademark transfer process
1. The trademark transfer process includes: application → acceptance → review → announcement → issuance of transfer certificate.
2. Documents required for trademark transfer:
A. "Transfer Application/Registered Trademark" Application";
B. Identity documents (copies) of the transferor and transferee;
C. If entrusting an agent, submit the "Agency Letter" issued by the transferee. If handled directly in the acceptance hall, submit the original and copy of the ID card of the transferee's handler;
D, if you apply for transfer, you should also submit relevant supporting documents;
E. If the application documents are in a foreign language, you should also provide a Chinese translation signed and stamped by a translation agency .
3. Trademark transfer time: It takes about 6-10 months.
Things to note in the trademark transfer contract
The trademark transfer contract refers to the legal Establish a procedure to transfer its trademark to another person, and the transferee shall enjoy the exclusive right to the trademark.
(1) Review of the validity of the trademark transfer contract:
The review of the validity of the trademark transfer contract is mainly Review whether the contract is invalid or revocable, whether the transferred trademark is a trademark frozen by the people's court and a trademark registered as a pledge:
1. Review Whether there are any circumstances stipulated in my country's Civil Code (effective on January 1, 2021) in the contract.
The "Civil Code" (effective on January 1, 2021) provides for the invalidity of contracts:
Article 144 [Effectiveness of civil legal acts performed by persons without capacity for civil conduct] Civil legal acts performed by persons without capacity for civil conduct are invalid.
Article 146 [Effectiveness of False Representation and Hidden Acts] Civil legal acts performed by the actor and counterparty with false representations of intention are invalid.
Article 153 [Effectiveness of civil legal acts that violate mandatory provisions and violate public order and good customs] Civil legal acts that violate mandatory provisions of laws and administrative regulations Legal acts are void. However, this mandatory provision does not invalidate the civil legal act except where such mandatory provision does not render it invalid.
Civil legal actions that violate public order and good customs are invalid.
Article 154 [Malicious collusion] Civil legal acts in which the actor maliciously colludes with the counterparty and harms the legitimate rights and interests of others are invalid.
Article 497 [Situations in which format clauses are invalid] There are any of the following circumstances:, this format clause is invalid:
(1) It is invalid as specified in Section 3 of Chapter 6 of Part 1 of this Law and Article 506 of this Law Situation;
(2) The party providing the standard terms unreasonably exempts or reduces its liability, increases the other party's liability, and restricts the other party's main rights;
(3) One party providing the format clause excludes the other party’s major rights.
Article 506 [Effectiveness of Disclaimer Clauses] The following disclaimer clauses in the contract are invalid:
(1) Causes personal damage to the other party;
(2) Causes property damage to the other party due to intentionality or gross negligence.
2. Examine whether the transferred trademark is a trademark frozen by the people's court and a trademark registered as a pledge. During the freezing period and the pledge period, the trademark may 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 shall 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 transferee shall be limited to enterprises, institutions, social groups, individual industrial and commercial households, Individuals, partnerships, and foreigners or foreign enterprises.
2. The basic information of the trademark, including the trademark name, design, country, registration time, registration number, the category of goods or services for which the registered trademark is approved, and The name of the product or service.
3. Trademark rights licensing status. Before a trademark right is transferred, it often happens that the transferor has licensed the right to use the trademark to a third party. 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, clearly agree on the circumstances under which the transferred trademark is permitted to be used, and whether the transferee will continue to use the transferred trademark after signing the contract. You must bear the rights and obligations related to the licensed use.
4. After the trademark right is transferred, the rights of the transferee. It should be clearly agreed on the types of goods (or types and names of services) that can use the trademark and theto the geographical scope of use of the trademark.
5. The nature of the transfer of trademark rights. It should be clearly agreed 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 enjoys different rights periods.
6. Time for transfer of trademark rights. Depending on the nature of the transfer of trademark rights, the transfer time is also different. For permanent trademark rights transfer, it is generally agreed that the trademark rights will be officially transferred to the transferee after the trademark transfer change registration procedures are completed in the trademark rights transfer contract. For non-permanent transfer of trademark rights, the transfer period should be agreed upon and the transferor will take back the trademark rights upon expiration 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 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.
In the case of a non-permanent transfer, 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. The transferee shall not disclose the technical secrets and business secrets provided by the transferor for the transfer of the trademark during or after the contract period.
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 There is no clear agreement on various circumstances under which liability for breach of contract should be borne, so the liability for breach of contract clause cannot be applied.
② In the form of breach of contract to pay liquidated damages or damages, there is no stipulation on the calculation basis for liquidated damages or damages, making the breach of contract clause inoperable.
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 the breach of contract
④ If the liquidated damages agreed upon by the parties are excessively higher than the losses caused, the parties may request the people's court or arbitration institution to reduce it appropriately. The law stipulates that "if the liquidated damages agreed upon by the parties exceed 30% of the losses caused, , can generally be considered as “excessively higher than the loss caused”. ”
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 arbitration is adopted, 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 The two parties are in different countries, and each party tries to agree on the application of domestic laws based on its own position.
(3) Common legal risks in trademark transfer contracts:
1. Matters that the transferor should pay attention to
(1) Make it clear that the transferee is limited to enterprises , public 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 approval is announced. It should be avoided to be a one-time payment after the trademark transfer is approved. Payment after announcement.
1. Matters that the transferee should pay attention to
(1) It should be clearly stipulated in the contract that the transferor legally enjoys the trademark transferred The exclusive right to use 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 only rely on the trademark registration certificate provided by the transferor, but must also investigate whether the transferor 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 do not match the name and address on the registration certificate of the transferred trademark, the Trademark Office will The transfer application will be rejected.
(2) In order to prevent confusion and consumption caused by different producers or service providers using the same trademark on the same type of goods or services It should be clearly agreed that when the trademark owner transfers its registered trademark, it should be transferred to the same transferee together with other identical or similar trademarks registered on the same or similar goods or services.
(3) According to current regulations, a later trademark transfer cannot affect the validity of the earlier license. The licensee can still continue to use the trademark during the validity period of the license, thus affecting the The transferee of the transferred trademark will have an adverse impact. Therefore, the license status of the trademark right should be clearly agreed upon.
(4) The transferor should ensure that during the transfer period, Do not sell goods bearing the same or similar trademark within the territory where the trademark is validly registered, nor engage in other activities that compete with the production and sale of the goods.
To sum up, when signing and performing a trademark transfer contract, both parties must have a full understanding of the transferred trademark, and should strictly follow the legal provisions to handle relevant procedures, so as to limit and avoid legal risks to the maximum extent.
The above is the content compiled by the editor of Legal Savior Network. Legal Savior Network has online lawyers. If you have any questions, you are welcome to consult at any time.
