To transfer a trademark, the transferor must be the recorded owner on the Trademark Registration Certificate or the applicant for a pending trademark application. The name of the transferor in the application must match the name on the certificate. A common issue arises if the transferor changes their name but has not updated this information on the Trademark Registration Certificate. In such cases, the transferor must first amend the name on the certificate before proceeding with the transfer.
Requirements for the Transferee
The transferee must meet the legal criteria for trademark ownership as set out in Chinese trademark law.
Conditions for Transferred Trademarks
The assignment of trademarks must meet the following conditions:
Avoiding consumer confusion: All identical or similar trademarks associated with the same or similar goods must be transferred together.
Multi-class trademarks: If a trademark spans multiple classes, all classes must be transferred together. Partial transfers are not permitted.
Documents Required for the Transfer
The following documents are necessary to complete a trademark transfer:
A signed Power of Attorney (POA) from both the assignor and assignee.
A copy of the assignor’s certificate of incorporation (or ID/passport for individuals).
An assignment agreement (a Deed of Assignment is acceptable based on mutual agreement).
In cases where the trademark holder no longer exists (e.g., due to merger, restructuring, or court ruling), the assignor’s identification documents and POA are not required. However, legal documentation must be provided to establish the transferee’s rights to the trademark.
Step-by-Step Process and Timeline
The process to transfer a trademark in China includes:
Document Preparation: Gather all necessary documents for submission.
Submission: File the assignment application with the China Trademark Office (CTMO).
Examination: The CTMO conducts a formal review.
Payment Notice: CTMO issues a notice for payment of fees.
The entire process typically takes 2 to 4 months if no revisions to the dossier are needed.
Potential Risks and Issues
While trademark transfers are often straightforward, certain risks and legal issues may arise, including:
Validity issues: The transferred trademark may be subject to termination of validity.
Non-use cancellation: A registered trademark can be cancelled if unused for three consecutive years without valid justification.
Consumer confusion: The transferred trademark may conflict with the trade name of the transferor.
Bad faith applications: If the trademark was applied for in bad faith or without proper rights, it may face cancellation or termination.
Frequently Asked Questions
When can trademarks be transferred? Trademarks may be transferred during business restructuring, changes in ownership, company dissolution, inheritance, or to improve intellectual property management.
Is notarisation of transfer documents required? Notarisation is not mandatory but is recommended to prevent disputes.
Can trademarks be transferred during the examination stage? Yes, trademarks can be transferred while under examination by filing a transfer application. However, the application could still be rejected for other reasons.
How long does it take for the CNIPA to process a trademark transfer? The review process generally takes 4–6 months but may be as short as 2 months in some cases. Timeframes are approximate and subject to change.
Woodburn Accountants & Advisors is one of China’s most trusted business setup advisory firms.
Woodburn Accountants & Advisors is specialized in inbound investment to China and Hong Kong. We focus on eliminating the complexities of corporate services and compliance administration. We help clients with services ranging from trademark registration and company incorporation to the full outsourcing solution for accounting, tax, and human resource services. Our advisory services can be tailor-made based on the companies’ objectives, goals and needs which vary depending on the stage they are at on their journey.