License of a Trademark in China
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Trademark licensing in China, this article will introduce the procedure of trademark license in China. 1. What is the license of a trademark? The trademark has an exclusive right after being approved to register. The license of a trademark refers to the trademark right holder authorize another person to use the trademark through legal procedures, commonly through concluding a license contract.
Please be noted that license a trademark just means that the licensee have the right to use the trademark within the terms of the license contract, the licensor is still the trademark right holder.
According to the China Trademark Law, the license of a registered trademark covers the following three categories:
1) License for sole use. It refers to the trademark right holder licenses the registered trademark to the only licensee for use in a way agreed by both licensor and licensee within the terms of the license contract. Under this condition, the trademark registrant must not use the registered trademark within the stipulated term as well as license any other third party to use.
2) Exclusive License. It refers to the trademark right holder license the trademark to the only licensee for use. Under this condition, the trademark right holder can use the trademark by itself but can’t license any other third party to use the registered trademark
3) General License. Under this condition, the trademark right holder not only can use the registered trademark by itself but also can license any other third party to use.
2. What is the trademark license contract?
The trademark license contract refers to the trademark right holder come to a contract with another person to authorize another person to use the registered trademark and obtain the fees from the licensee. Please be advised that the subject matter of the license contract is the use right of the registered trademark other than the ownership of the trademark.
3. The validity of the trademark license contract.
Article 40 of the China Trademark Law stipulates that a trademark registrant may authorize another person to use its registered trademark by a trademark license contract. The trademark license contract shall be submitted to the Trademark Office for recording. So, does it mean that the recording is the effect factor of the trademark license contract. Actually, is not really. According to the provisions of the Interpretation about the Application of Laws During the Hearing of the Trademark Civil Dispute issued by the Supreme Court, the validity of the trademark license contract will be not affected if the contract is not submitted for recording except that the parties involved have a separate agreement. A license contract without being recorded at the Trademark Office shall not be used as a defense against a bona fide third party. That’ to say, in the absence of special circumstance, once the license contract is signed, the licensee obtains the right to use a registered trademark. Meanwhile, the licensee may file a lawsuit individually or with the licensor when the trademark is infringed by any other party.
4. What is the significance of recording the trademark license contract?
As what we have said in the items 3, whether record the license contract does not affect the validity of the license contract under the condition of no separate agreement between the involved parties. So what is the significance of recording the license contract? In practice, the creation of the recording system is to better protect the legal right of licensor and licensee, especially to protect the right of licensee. As we mentioned above that a trademark license contract without be recorded at the Trademark Office should not be used as a defense against a bona fide third party. That’ to say, when the trademark is assigned to a third party by the trademark right holder or the trademark right holder pledges the trademark to a third party or the trademark is seized by a court, the third party or the new trademark right holder cannot recognize the former license contract if the license contract does not submitted for record at the Trademark Office. Under this condition, the legal right of licensee can’t be protected. However, if a record is filed, the recorded license contract can be used as a defense against the claims of the third party. By this way, the right of the licensee will be more guaranteed.
5. How long will it take for filing a record of trademark license contract?
Usually, it will take three months to six months to complete the procedure of recording the trademark license contract.
6. What is the required documentation for filing a record of trademark license contract?
To filing a record of trademark contract, you need to provide us with the following materials:
1) An executed Power of Attorney;
2) Copy of the passport or other identification certificate, for individual applicant. /Copy of Certificate of Incorporation for Enterprise. Please be advised that both the licensor and licensee need to provide the above identity document;
3) The copy of Certificate of Trademark Registration; and
4) The original trademark license contract or the notarized copy of the contract.
ABOUT THE AUTHOR: Borsam IP & Law Firm
Borsam is a professional I.P. law office, which consists by I.P. attorney, patent attorney and trademark attorney with ten-year experience and cooperates with Taiwan professional patent/trademark attorney. Borsam establish a long cooperation with I.P. firms of more than fifty countries. Our aim is to assist individuals and organizations to maximize the potential of their intellectual property and to minimize the risks faced from exposure to third party rights. We deal with patents, copyright, trademarks and associated issues in China, Hong Kong, Taiwan, USA, Europe and worldwide.
Copyright Borsam IP Law Firm
More information about Borsam IP Law Firm
Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.
According to the China Trademark Law, the license of a registered trademark covers the following three categories:
1) License for sole use. It refers to the trademark right holder licenses the registered trademark to the only licensee for use in a way agreed by both licensor and licensee within the terms of the license contract. Under this condition, the trademark registrant must not use the registered trademark within the stipulated term as well as license any other third party to use.
2) Exclusive License. It refers to the trademark right holder license the trademark to the only licensee for use. Under this condition, the trademark right holder can use the trademark by itself but can’t license any other third party to use the registered trademark
3) General License. Under this condition, the trademark right holder not only can use the registered trademark by itself but also can license any other third party to use.
2. What is the trademark license contract?
The trademark license contract refers to the trademark right holder come to a contract with another person to authorize another person to use the registered trademark and obtain the fees from the licensee. Please be advised that the subject matter of the license contract is the use right of the registered trademark other than the ownership of the trademark.
3. The validity of the trademark license contract.
Article 40 of the China Trademark Law stipulates that a trademark registrant may authorize another person to use its registered trademark by a trademark license contract. The trademark license contract shall be submitted to the Trademark Office for recording. So, does it mean that the recording is the effect factor of the trademark license contract. Actually, is not really. According to the provisions of the Interpretation about the Application of Laws During the Hearing of the Trademark Civil Dispute issued by the Supreme Court, the validity of the trademark license contract will be not affected if the contract is not submitted for recording except that the parties involved have a separate agreement. A license contract without being recorded at the Trademark Office shall not be used as a defense against a bona fide third party. That’ to say, in the absence of special circumstance, once the license contract is signed, the licensee obtains the right to use a registered trademark. Meanwhile, the licensee may file a lawsuit individually or with the licensor when the trademark is infringed by any other party.
4. What is the significance of recording the trademark license contract?
As what we have said in the items 3, whether record the license contract does not affect the validity of the license contract under the condition of no separate agreement between the involved parties. So what is the significance of recording the license contract? In practice, the creation of the recording system is to better protect the legal right of licensor and licensee, especially to protect the right of licensee. As we mentioned above that a trademark license contract without be recorded at the Trademark Office should not be used as a defense against a bona fide third party. That’ to say, when the trademark is assigned to a third party by the trademark right holder or the trademark right holder pledges the trademark to a third party or the trademark is seized by a court, the third party or the new trademark right holder cannot recognize the former license contract if the license contract does not submitted for record at the Trademark Office. Under this condition, the legal right of licensee can’t be protected. However, if a record is filed, the recorded license contract can be used as a defense against the claims of the third party. By this way, the right of the licensee will be more guaranteed.
5. How long will it take for filing a record of trademark license contract?
Usually, it will take three months to six months to complete the procedure of recording the trademark license contract.
6. What is the required documentation for filing a record of trademark license contract?
To filing a record of trademark contract, you need to provide us with the following materials:
1) An executed Power of Attorney;
2) Copy of the passport or other identification certificate, for individual applicant. /Copy of Certificate of Incorporation for Enterprise. Please be advised that both the licensor and licensee need to provide the above identity document;
3) The copy of Certificate of Trademark Registration; and
4) The original trademark license contract or the notarized copy of the contract.
ABOUT THE AUTHOR: Borsam IP & Law Firm
Borsam is a professional I.P. law office, which consists by I.P. attorney, patent attorney and trademark attorney with ten-year experience and cooperates with Taiwan professional patent/trademark attorney. Borsam establish a long cooperation with I.P. firms of more than fifty countries. Our aim is to assist individuals and organizations to maximize the potential of their intellectual property and to minimize the risks faced from exposure to third party rights. We deal with patents, copyright, trademarks and associated issues in China, Hong Kong, Taiwan, USA, Europe and worldwide.
Copyright Borsam IP Law Firm
More information about Borsam IP Law Firm
View all articles published by Borsam IP Law Firm
Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.
