Change of trademark owner China

Transfer of Chinese Trademarks – Requirements, Procedure, and Our Comprehensive Services

Introduction

The transfer of trademark rights in China is clearly regulated and allows for the transfer of both registered trademarks and pending trademark applications. Whether in the context of company sales, internal corporate restructurings, strategic portfolio streamlining, or the early involvement of investors and business partners – careful planning and documentation are essential. Below, we provide a concise overview of the prerequisites, the procedure, and the recommended measures for transferring Chinese trademarks. Additionally, you will learn how our comprehensive services can support you in this process.

Legal Foundations of Chinese Trademark Transfer

Chinese trademarks are protected under the Trademark Law of the People's Republic of China (Trademark Law of the PRC) and are administered by the China National Intellectual Property Administration (CNIPA). The transfer of trademark rights is governed by these legal provisions and requires formal registration with the CNIPA. A trademark transfer is possible provided there are no conflicting third-party rights and the current trademark owner is legally entitled to transfer the rights.

Unlike in some other jurisdictions, notarization is not required for the transfer of a trademark in China. The legal effectiveness of the transfer is achieved through proper registration with the CNIPA.

Transferability of Registered Chinese Trademarks and Pending Applications

In China, both registered trademarks and pending trademark applications can be transferred. This provides companies and trademark owners with the flexibility to transfer their trademark rights to new owners without having to restart the entire process. The transfer of registered trademarks is done by submitting the necessary documents to the CNIPA, while for trademark applications, the consent of the new applicant is also required.

The legal effects of a transfer only take place once the new owner is entered into the trademark register. This ensures that the new owner can fully exercise their rights over the trademark.

Prerequisites and Procedure

1. Examination of Transferability: First, it must be ensured that the current trademark owner is legally entitled to transfer the trademark. This includes checking for existing licenses, security interests, or contractual restrictions that might impede a transfer.
2. Power of Attorney and Transfer Agreement: A written agreement between the current and the new owner is required. Although notarization is not necessary, it is advisable to draft a detailed transfer agreement that outlines all relevant conditions.
3. Submission of Documents to the CNIPA: After preparing the necessary documents, they are submitted along with the completed transfer form to the CNIPA. Electronic submission is possible and speeds up the process.
4. Review and Registration: The CNIPA reviews the submitted documents for completeness and compliance. After a successful review, the new owner is entered into the trademark register.

Required Documents and Formal Requirements

The following documents are required for a legally secure transfer of a Chinese trademark:

1. Transfer Agreement: A written contract that governs the transfer of trademark rights. This should be signed by both parties.
2. Power of Attorney: A power of attorney signed by both parties, authorizing the representative to carry out the transfer.
3. Transfer Form: The transfer form provided by the CNIPA for registering the trademark transfer.
4. Copy of Trademark Registration: A copy of the trademark registration certificate or the trademark application.
5. Business Documents: Copies of business licenses or commercial registration extracts of both parties.
6. Fee: The applicable fees for the transfer, which must be submitted to the CNIPA.

Notarization or legalization of the documents is not required. Copies of the signed documents can be conveniently submitted via email.

Processing Time and Costs

The processing time for transferring a trademark in China typically takes about two to three months, depending on the CNIPA's workload and the completeness of the submitted documents. Costs include the official fees charged by the CNIPA as well as legal fees for preparing the necessary documents. Overall, the costs for transferring a trademark are moderate, especially compared to the potential economic benefits of a successful trademark transfer.

By ensuring precise and error-free filing, clear powers of attorney, and a carefully drafted transfer agreement, delays and additional costs can be largely avoided. Ideally, the process is not only legally sound but also economically efficient.

The Importance of a Carefully Drafted Transfer Agreement

Although a written transfer agreement is not legally mandatory, it offers significant advantages. A well-drafted contract not only regulates the financial aspects of the transfer but also addresses questions regarding the future use of the trademark, liability issues, and potential licensing agreements. This provides long-term legal certainty and minimizes the risk of misunderstandings or legal disputes between the parties.

Especially for valuable trademarks or complex corporate structures, a detailed transfer agreement is indispensable to cover all relevant aspects of the transaction and protect the interests of both parties.

Our Services for Chinese Trademark Transfers

Our law firm provides comprehensive support for the transfer of your Chinese trademark – from the initial review to the final registration in the register. Our services include:

• Comprehensive Legal Advice: We analyze your initial situation, verify transferability, and identify any encumbrances or contractual restrictions.
• Preparation of Required Documents: We prepare the transfer agreement and the necessary powers of attorney, and assist you in completing the transfer form.
• Submission to the CNIPA and Communication: We handle the formal notification to the CNIPA, address any queries, and guide you until the new owner is registered.
• Strategic Advice Post-Transfer: After a successful transfer, we advise you on the strategic development of your trademark rights, such as enforcement against infringers, extending protection, or long-term trademark maintenance.

Typical Scenarios and Benefits of Trademark Transfer

Transferring Chinese trademarks offers a wide range of practical applications:

• Company Sales and M&A Transactions: During the sale of a company or in mergers and acquisitions, trademark rights are often transferred to support the buyer’s business operations.
• Strategic Portfolio Streamlining: Companies can sell trademarks they no longer need to free up capital and focus on strategically relevant marks.
• Involving Investors or Partners: By transferring a trademark application early to an investor or partner, financial resources for brand development can be mobilized or competencies pooled.
• Succession and Inheritance: As part of succession planning or inheritance, trademark rights can be seamlessly transferred to new shareholders or heirs.

Long-Term Perspectives and Legal Certainty

A carefully prepared transfer not only provides short-term clarity but also lays the foundation for a long-term trademark strategy. By considering potential future developments, international markets, possible licensees, or infringements at the point of transfer, you ensure the sustainable value enhancement of the brand.

A smooth, professionally accompanied transfer process minimizes legal risks, reduces administrative burdens, and frees up resources that can be utilized for further brand development. Thus, the transfer of Chinese trademarks becomes not just a formality but a strategic step to benefit from strong trademark rights in China.

Conclusion

The transfer of trademarks in China is clearly regulated, efficiently implementable, and offers numerous opportunities to flexibly shape trademark strategies. A written agreement between the parties and proper notification to the CNIPA are sufficient to register the new owner in the trademark register. Although a written transfer agreement is not legally required, it is strongly recommended to ensure long-term legal certainty and economic clarity.

Our law firm provides comprehensive support in all steps of the trademark transfer – from the initial review and document preparation to submission to the CNIPA and strategic advice post-transfer. This ensures a successful and sustainable trademark policy foundation in China.