Trademarks transfer, licensing and other transactions seem simple, but there are still many problems. From the perspective of risk investigation, this paper lists some common risks that may exist in trademark transactions to remind enterprises to prevent regrettable or even regrettable results, or to minimize the impact caused by negligence.
Trademarks transfer, licensing and other transactions seem simple, but there are still many problems. Even star companies like Apple are involved in the trademark transfer of the iPad. Fortunately, many low-level mistakes in trademark transactions are easier to solve through due diligence.
As an important part of intellectual property transactions, trademark transactions take many forms. In addition to trademark transfer, licensing and pledge, there may be trademark transactions in business activities such as enterprise mergers and acquisitions, OEM/ODM, joint ventures and franchising. Different forms of trademark transactions have different risks, but there are also some similarities. Here, from the perspective of risk investigation, the shopkeeper lists some common risks that may exist in trademark transactions to remind enterprises to prevent regrettable or even regretful results, or to minimize the impact caused by negligence.
1. Is the trademark registered?
If the traded trademark is not registered at all, or it is not renewed in time when it expires, or it is revoked or invalid according to law, there is no legal right to exclusive use of the trademark, and anyone has the opportunity to use the trademark, or even be registered by others, thus hindering his rights such as ownership or use right obtained from trademark trading. Of course, assuming that unregistered or unregistered trademarks are the unique names and appearances (packaging and decoration) of well-known trademarks or well-known commodities, you can still enjoy the protection of the Trademark Law or the Anti-Unfair Competition Law. But it is not easy to claim the unique name or appearance of a well-known trademark or commodity.
2. Is the trademark still being registered?
This is a continuation of the previous question. In some cases, although the trademark has not been approved for registration, it may have formally applied for registration. However, due to legal obstacles such as lack of distinctiveness and infringement of prior rights, this trademark may not be approved for registration.
The Supreme People's Court believes that laws and regulations do not prohibit others from using unregistered trademarks, and the parties to a trademark licensing contract have no special agreement on whether a trademark should be registered. If one party claims that the license contract is invalid on the grounds that the unregistered trademark constitutes fraud, it will not be supported. In fact, at present, many courts admit that unregistered trademarks can be transferred or licensed, but in this way, the legal and commercial risks of the transferee and the licensee are great. Therefore, we must find out the trademark registration of the other party. Of course, when signing the contract, we must also make it clear that the trading trademark must be a valid registered trademark. Because even if the trademark is finally approved for registration, there may be trademark objections in the process from trademark application to trademark approval and registration, which will keep you busy.
3. Does the other party have the right to dispose of the trademark right?
After finding out the authenticity of trademark registration, you should also know whether the person you are dealing with has the right to dispose of this registered trademark, whether he is the right holder (registrant or owner) of this registered trademark, or the agent specially authorized by the right holder, or the licensee who is allowed to sub-license. If the trademark is owned by * * *, is it approved by * *? You can check the trademark registration certificate, trademark transfer contract, trading authorization, or inquire about trademark announcements and trademark websites to find out who the real owner of the traded trademark is and who has the right to transfer, license or pledge the trademark at present.
4. Where is the trademark registration valid?
The effectiveness of trademark rights is regional. Trademarks registered in France are only valid in China, and trademarks registered in France are only valid in France. If you want to obtain the ownership or use right of a trademark in China, you must confirm that the trademark has been approved for registration. If you want to use this trademark to manufacture goods and export them to Europe at the same time, then this trademark needs to be registered in relevant European countries in addition to registration, otherwise you may encounter trademark infringement when exporting.
5. When will the trademark registration expire?
Trademark registration has a time limit, and the validity period of China's trademark law is 10 year. However, the registration can be renewed after the expiration. The key point is that if the trademark registration is about to expire, the relevant parties should urge the trademark registrant to complete the renewal procedures. Especially before the transfer (the subsequent exhibition of the transfer is the transferee's own business), or during the licensing and pledge period, it is necessary to ensure the renewal of the registration of the trademark registrant so as not to damage its own commercial rights and interests.
6. Is the traded trademark consistent with the registered trademark?
Although the other party's trademark has been approved for registration, is the trademark used for trading consistent with the trademark approved for registration? According to Article 56 of the Trademark Law, The exclusive right to use a registered trademark is limited to the registered trademark and the goods approved for use. ? Trademarks that are inconsistent with registered trademarks (especially those with great differences) shall not enjoy the exclusive right to use trademarks. If you buy and use a registered trademark carelessly, it may also constitute an illegal act of changing or counterfeiting a registered trademark by yourself.
7. What are the goods or services specified by the trademark?
The exclusive right to use a registered trademark is limited to the goods or services approved for use. It is necessary to find out whether the right holder has exceeded the approved scope of use, whether he has issued a license for use, and whether he has engaged in transfer, because if others register the same or similar trademarks on those goods or services that the right holder has exceeded the approved scope of use, this may lead to trademark infringement and other problems. In addition, it is also very important to check whether the products or business scope you need to use are consistent with the goods or services specified in the other party's trademark registration, and to check the consistency between the other party's trademark registration and your own business.
8. Who owns the copyright of the trademark?
At present, the components of a trademark are very rich, including words, graphics, letters, numbers, three-dimensional signs, TINT and sounds, and the combination of the above elements. Among them, graphics, three-dimensional signs, sounds, words (such as advertising language) can meet the requirements of the production of works and enjoy the protection of copyright. However, the copyright of these trademarks may not be in the hands of the trademark owners. For example, according to the provisions of the Copyright Law, the copyright of a work commissioned by others belongs to the creator without agreement. So, if the trademark owner entrusts others to create a trademark, even if the trademark enjoys copyright and there is no agreed ownership, what is it? Someone else's house? Although the trademark owner can continue to use his trademark legally according to the purpose of entrusted creation, after all, the rights are not satisfactory and trouble has arisen.
9. Does the trademark registration meet the authorization conditions?
Trademark registration needs to meet a series of authorization conditions such as distinctiveness, non-functionality, non-prohibition of signs, and non-infringement of others' rights. Therefore, it is necessary to evaluate the traded trademarks in order to prevent them from being declared invalid in the future because of violating legal provisions or infringing others' rights. For example, the weak distinctiveness of trademarks has a great influence on trademark protection, and the weak distinctiveness of trademarks is easy to be used reasonably by others (including competitors) and difficult to stop. It can be seen that the distinctiveness of a trademark has a great influence on the scope of protection or special use of a trademark.
10. Has the trademark become a common name?
According to the second paragraph of Article 49 of the new Trademark Law of 20 13, any unit or individual may apply to the Trademark Office for cancellation of a registered trademark if it becomes the common name of the goods approved for use. In fact, escalators, thermos bottles, aspirin and nylon were originally registered trademarks of famous enterprises, and later they all became common names of related products. In China, USB flash drives? (USB flash drive), Snowflakes? Trademarks such as (flour) have been recognized as generic names by the Trademark Review and Adjudication Board or the people's court, and their exclusive rights have been lost.
1 1. Do you have the same or similar trademarks?
If the ownership of the other party's trademark is obtained through trademark transfer, enterprise merger, etc. In order to avoid the market confusion caused by the existence of related commercial trademarks in the future, or even violate the mandatory provisions of the law, it is necessary to examine whether the other party has commercial trademarks similar to the trading trademarks, and further consider whether it is necessary to transfer these related commercial trademarks such as defensive trade mark and United Trademark together.
According to the second paragraph of Article 42 of the Trademark Law? Where a registered trademark is transferred, the trademark registrant shall transfer the similar trademark registered on the same commodity or the same or similar trademark registered on similar commodities together. ? Paragraph 3 of this article stipulates that the Trademark Office shall not approve the assignment that is likely to cause confusion or have other adverse effects, and shall notify the applicant in writing and explain the reasons. ? It can be seen that similar trademarks registered on the same or similar goods as trading trademarks and the same trademarks registered on similar goods should be transferred together. This is a mandatory requirement in the trademark law, otherwise the transfer will encounter legal obstacles.
12. Do you tolerate cross-class registration of the same or similar trademarks?
Trademark law does not require that trademarks registered on different or similar goods that are the same as or similar to trading trademarks must be transferred together. However, from the perspective of commercial prudence, it is still necessary to evaluate which types of identical or similar trademarks should be acquired together to avoid future commercial confusion. For example, the right holder registered trademarks on the car 12 and 28 toys respectively. It is better to buy a trademark on a car than to buy a trademark on a toy together. Don't belong to two companies after the acquisition, otherwise there will be conflicts between the toy car and your real car in the future.
13. Do you have the same product name or domain name as the trademark?
In order to effectively protect trademarks, some enterprises not only registered defensive trademarks and joint trademarks, but also kept trademarks consistent with trade names and domain names. Although you bought a trademark, people still keep the same font size or domain name as the trademark. You need to consider whether this is an acceptable result for you. If Shanghai Mickey Toys Co., Ltd. will? Mitch? The toy trademark was sold to you, but after the trademark was sold, the other party was still called Mickey Toys Company. After all, it is an ambush bomb. Imagine if the other person is still making toys, although he can't use them? Mitch? Trademark, but still marked conspicuously on toy goods or their packaging? Mickey toy company? Will there be obvious differentiation among consumers?
14. Is there any pledge or other restrictions on the trademark?
Suppose a registered trademark is pledged and then transferred to you, obviously this is not a good thing. Because once the debts secured by the trademark cannot be paid off, the pledgee (creditor) has the right to discount the exclusive right to use the trademark, or give priority to the payment of the exclusive right to use the trademark by auction or sale. As a result, the trademark you spend money on will eventually fly to other people's arms.
15. Is the trademark subject to licensing?
In addition to the pledge of trademark rights, there are also restrictions on trademarks and existing license agreements, especially exclusive licenses. According to the characteristics of exclusive license, except the licensee, the trademark owner may not issue a license to a third party or use the trademark himself. If you already have an exclusive license, you are not allowed to obtain a second trademark license from the obligee, otherwise you will get an unstable license, and the licensee who enjoys the exclusive license will soon interfere. If the transferred trademark has been licensed to the outside world, according to? Business does not break the contract? Similar rules, the transferee is still bound by the prior license, and there may even be cases where the transferee has ownership but cannot use it (for example, a third party enjoys an exclusive license).
16. Is there any dispute about the trademark?
Is there any dispute over ownership, cancellation of registration or invalidity of the traded trademark? If these disputes exist, the other party may completely lose the ownership of the trading trademark in the future, and even the registration of the trading trademark will cease to exist because of revocation or invalidity. It is worth noting that in some trademark contract dispute cases, if there is no clear agreement, even if the trademark registrant does not disclose the facts of the trademark dispute, it does not need to bear the liability for breach of contract.