China Intellectual Property Transfer Special Edition (Part 4) - Trademark Licensing and Pledge

1. Types of Trademark Licenses and Filing Requirements in China

• Types of trademark licenses in China include: exclusive license, exclusive license, general license, sublicense, and cross-license.
• The law stipulates that a trademark licensing contract must be filed with CNIPA within three months of signing.
• Special Note: Sublicenses do not require filing, as CNIPA no longer accepts such filings. Failure to file does not affect the validity of the sublicense agreement.

2. Is it necessary to submit the original trademark license agreement?

• Photocopies or scanned copies will suffice.

3. Does a trademark license agreement need to be notarized or translated?

• Notarization and legalization are not required. If the application document is not in Chinese, a Chinese translation must be submitted.

4. Is it necessary to use a specific form to register and record a trademark transfer?

• Yes, you need to fill in the Trademark License Recordal Form.
• Required documents include:
  • Trademark License Registration Form
  • Copy of the licensor/licensee's identification
  • Power of Attorney
  • Other documents, such as a translation of your ID

5. What are the legal consequences of not registering and filing trademark transfers?

• Permission is generally considered to be confirmatory.
• Failure to file will result in loss of the following rights:
  • Cannot be used against a bona fide third party
  • Cannot be used as evidence
  • Not conducive to the determination of infringement damages
  • Cannot be used as supporting documents for funds transfer

6. Partial Trademark License

• A registered trademark may not be partially licensed.

7. Is it necessary to appoint a professional representative in my country?

• Yes. Foreign parties without a residence or business establishment in China must entrust a domestic agent to handle the matter.

8. Trademark license filing fees

• The official fees are: paper application: 150 yuan/category; electronic application: 135 yuan/category.

9. Is trademark pledge permitted in China? Is filing required?

• Yes, trademark pledge is allowed in China. According to the Civil Code of the People’s Republic of China, trademark pledge must be filed with CNIPA and will be established from the date of registration.