1-888-330-0010 | firm@harris-sliwoski.com
Home | China Law Blog | Your China Trademark Is Now Registered: What Next? What Document Should I Provide To Record Trademark Assignment In Us?
What happens when you register a China trademark? What follows is an example of the emails our China trademark lawyers send clients after their trademark is registered, with some additional notes in bold italics.
1. An application to change name or address should be filed CNIPA if the registrant’s name and/or its address changes. Keeping name and address information current will help avoid delays in case enforcement of trademark rights is necessary. Note that a name change is different from an assignment. If ABC, Inc. changes its name to ABCD, Inc., that is just a name change. However, if ABC, Inc. sells the trademark to XYZ, Inc., that constitutes an assignment (see 2. below), in which case the process is a bit more complicated.
2. An assignment application should be filed with CNIPA if the registered trademark is assigned by you to a different party. To assign a trademark, the parties will need to enter into a written assignment agreement, which can be a very simple document. This agreement is then submitted to CNIPA, together with an application to record the assignment.
3. A license recordation application should be filed with CNIPA if a license to use the registered mark is granted to a different party. A license is different from an assignment. In an assignment, ownership of the trademark is transferred to another party. By contrast, a license just grants another party (the “licensee”) the right to use the trademark, with ownership remaining in the hands of the original owner (the “licensor”). The licensee could be ABC, Inc.’s China subsidiary, or an authorized distributor.
4. The trademark registration may be cancelled by CNIPA if the trademark is not used by you or a licensed party in relation to the goods covered by the registration for a period of three (3) consecutive years. Trademark owners do not need to proactively demonstrate use of a trademark in order to register it, nor to maintain the registration. However, a third party can request the cancellation of the trademark registration if the trademark goes unused for a period of 3 consecutive years. To guard against this possibility, owners should ensure that the trademark is not left unused for long periods of times. In addition, use of the trademark should be documented, in order to have evidence of use to present if a cancellation on the basis of non-use is requested.
5. The period of validity of the registered mark is ten (10) years, starting on the registration date. An application for renewal of the registration may be filed with CNIPA at any time within the 12 months prior to the expiration date. In some countries, the validity period for a trademark registration starts on the application date, but in China it starts on the date of registration.
While we endeavor to inform clients of renewal deadlines, please note that these reminders are sent as a courtesy and contingent upon us being able to establish contact with you. With that in mind, please ensure that you keep us informed of any changes to your contact information. In addition, I strongly encourage you to calendar this date. Be sure to keep your trademark counsel apprised of your current contact information at all times. When a trademark is up for renewal, counsel will do all it can to track down the owner (or someone authorized to act on its behalf), but this is not always possible. Relatedly, and particularly in the case of corporate owners, it is important to ensure that there is continuity when it comes to trademark matters. The best practice is to have multiple recipients on the relevant distribution list, to provide redundancies in case of employee departures.
Once again, thank you for the opportunity to work with you on this matter. Please do not hesitate to contact me if you have any questions or if we can be of further assistance.
And that is it! Any questions?
Fred leads Harris Sliwoski’s intellectual property practice and is the coordinator of the firm’s international team. Much of Fred’s practice consists of helping cannabis businesses protect their brands. He also works with entrepreneurs and companies entering the Web3 space, a new frontier for IP law. Prior to joining Harris Sliwoski, Fred worked overseas for more than a decade, in both government and private sector roles. Fred is a regular contributor to the award-winning China Law Blog and Canna Law Blog. Fred began his career overseas as a U.S. consular officer in Guangzhou, China, where he advocated for fairer treatment of American companies and citizens in China and for stronger intellectual property rights enforcement. After entering the private sector, Fred worked at a Shanghai law firm as a foreign legal advisor and later joined one of the oldest American law firms in China, helping foreign companies navigate the Chinese legal environment. He also led the legal team at a Hong Kong-based brand protection consultancy, spending most of his time out in the field, protecting clients against counterfeiters and fraudsters in Greater China, Southeast Asia and Latin America. In addition to his IP work, as a native Spanish speaker, Fred works closely with different Harris Sliwoski teams on Latin America and Spain matters. Fred also provides advice to cannabis industry participants and other businesses on import and export transactions. Fred is an ardent supporter of FC Barcelona—and would be even in the absence of Catalan forebears who immigrated to Puerto Rico in the mid-1800s.
Stay up to date with news and insights on China Law by subscribing to the blog
What Document Should I Provide To Record Trademark Assignment In Eu? © 2024 Harris Sliwoski LLP. All Rights Reserved.