CNIPA highlights critical aspects of trademark assignment in published guidelines

In China, trademark assignment is regulated by a filing system, which means that assignees can only obtain trademark rights after the application for assignment has been filed, approved and published by the China National Intellectual Property Administration (CNIPA). 

To assist parties in understanding the relevant legal provisions and examination procedures for trademark assignment and to guide them in following the principle of good faith, the CNIPA has published the Guidelines on Trademark Assignment Procedures. Given that assignees often pay high fees to acquire trademarks, it is crucial to understand these guidelines in order to protect their interests in trademark assignment matters. 

Qualification of the assignor

An assignor should be the owner of a registered trademark or the applicant of a mark that is pending examination. Its name should be consistent with the one recorded in the trademark filed before the CNIPA. In the case of a name change, the assignor must submit a request for this to be recorded first – the trademark assignment application will be examined after this is approved.

Qualification of the assignee

The assignee should meet the relevant requirements of China’s Trademark Law concerning the applicant’s qualifications for registration. For example, a trademark agency cannot apply for or transfer trademarks other than those related to its industry in Class 45. An individual should run a self-employed business if they want to apply for or transfer a trademark registration. 

In some cases, assignees may choose a third party to represent them in the trademark transfer negotiations and to handle the assignment filing procedures, so special attention should be paid to the selection of the middleman in this regard.

Application documents

According to the relevant provisions of the Trademark Law, an assignment application should be jointly submitted by both assignor and assignee based on their genuine intentions and the documents must also be signed by both parties. For jointly owned trademarks, the assignment must be confirmed by all co-owners before it can be processed. 

It should be noted that if the assignor is a Chinese company, in addition to affixing the company's official seal, the trademark assignment statement also requires the signature of the assignor’s legal representative or authorised person.

Issues with simultaneous assignment 

According to Article 42 of the Trademark Law, a registrant intending to assign the registered mark must assign all of its similar or identical marks on similar or identical goods at the same time. Where an assignment may easily cause confusion or have any other adverse effects, the trademark office will disapprove it and notify the applicant of this in written form with an explanation of the reasons for its decision.

To prevent confusion or misidentification of the source of goods or services due to multiple identical or similar marks being transferred to multiple different entities, the Trademark Law requires that the assignor transfer all of the identical or similar trademarks for the same or similar goods/services to the same assignee.

For an assignor’s international registrations that extend to China, these should also be simultaneously assigned. Similarly, when handling an assignment application of an international trademark in China, any national identical or similar trademarks for the same or similar goods/services owned by the assignor should also be simultaneously assigned to the same assignee. Otherwise, the CNIPA will issue a notification of amendment during the examination of the assignment recordal, requiring the simultaneous assignment of the identical or similar trademarks. If this is not processed according to the corresponding notification, the submitted recordal will not be approved.

Further, the assignment for the international registrations for the China portion should be filed through WIPO instead of directly before the CNIPA. 

With regard to a multi-class application, partial assignment for some specific classes is not available in China – the Trademark Law requires the entire application to be assigned together.

The second instalment next week will analyse situations that are considered likely to cause confusion and thus will not be approved and other key considerations for trademark registrants.