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The trademark licensing procedure

mainly stipulates two procedures, one is for the licensor and the licensee to sign a licensing contract; the other is for the licensor to sign a licensing contract with the licensee; One is that the trademark license contract should be reported to the Trademark Office for filing, which means it is subject to supervision.

The basic feature of the trademark licensing relationship is the separation of trademark ownership and use rights. The licensor and the licensee have different responsibilities for the realization of trademark functions and for the public. , and have their own legal obligations. There are three main provisions of the Trademark Law:

First, the licensor should supervise the quality of the goods used by the licensee using its registered trademark. This is a right of the licensor, but more importantly, it is an obligation of the licensor, that is, the obligation to supervise and ensure the quality of the registered trademarks it owns. The licensor is not allowed to assume no liability after its registered trademark is used by others. Instead, the law determines that the licensor must still bear the responsibility for product quality to prevent the licensee from improper behavior that damages business reputation and harms the interests of the public.

Second, the licensee should ensure the quality of the goods using the registered trademark. This is the legal obligation of trademark users. Trademarks establish reputation through the quality of goods. Maintaining trademark reputation is not only the licensor's concern, but the licensee should also guarantee the quality of the goods using the trademark.

Third, if you use someone else’s registered trademark with permission, you must indicate the name of the licensee and the place of origin of the goods on the goods using the registered trademark. This is a requirement arising from the practice of trademark licensing. The purpose is to prevent trademark users from trying to take advantage of the reputation of the trademark and provide low-quality goods that are inconsistent with this reputation. In order to enable consumers to identify and clarify the different uses of the same trademark Therefore, it is necessary to indicate the name and origin of the licensee on the respective products. This will enhance the sense of responsibility of the trademark user and also allow consumers to have choices when facing different users of the same trademark. . Of course, the same trademark should reflect the same reputation. The above-mentioned regulations on labeling the licensee and place of origin are exactly the measures taken to maintain the reputation of the trademark.

The benefits of trademark licensing

Article 57 of the "Trademark Law" stipulates: "Anyone who commits any of the following acts shall infringe the exclusive right to use a registered trademark:

(1) Using the same trademark as its registered trademark on the same kind of goods without the permission of the trademark registrant;

(2) Using the same trademark on the same kind of goods without the permission of the trademark registrant Using a trademark that is similar to its registered trademark, or using a trademark that is the same or similar to its registered trademark on similar goods, which is likely to cause confusion; " Therefore, trademark licensing is a win-win situation in most cases. For the licensor, it can increase production and radiation coverage without expanding investment, expand market share, further increase the visibility of the trademark and obtain benefits. In the case of the licensor being withdrawn, it can provide more licensees. Evidence of trademark use; for the licensee, it can not only solve the need for urgent trademark use, but also expand product sales and increase efficiency and development by using other people's already well-known trademarks.

In addition, the filing of the trademark license contract is mainly for publicity and convenience for others to review. If there is no license registration, you will not be able to fight against a bona fide third party. Therefore, it is recommended that you register your trademark license in a timely manner to protect the rights and interests of both parties to the contract.

At the same time, the licensed trademark licensee can sublicense, that is, the trademark registrant allows a third party to use its registered trademark through the licensee, which can increase the popularity of the trademark through diffusion.

Contents of the trademark license contract

(1) The names and addresses of the licensor and the licensee;

(2) The licensed trademark and its Registration number;

(3) Scope of goods for which the trademark is licensed;

(4) Licensed period of use (should not exceed the registration validity period of the licensed trademark);

(5) The method of providing the logo of the licensed trademark;

(6) The terms for the licensor to monitor the quality of the goods for which the licensee uses its registered trademark;

(7 ) Terms that indicate the name of the licensee and the origin of the goods on goods bearing the licensor's trademark.

Can a trademark license contract be effective without registration?

A trademark license contract can be effective without registration. According to legal provisions, a trademark license contract must be reported to the Trademark Office for filing. However, once a trademark license contract concluded in accordance with the law takes effect according to the agreed time and conditions, it will be legally binding on the parties to the contract. Whether a trademark license contract is filed or not has no impact on the legal validity of the contract itself. However, if the parties to the contract, when entering into a trademark license contract, explicitly agree that the trademark license contract must be filed with the Trademark Office as a condition for the contract to take effect, then the unrecorded contract shall not be legally effective. The relevant legal provisions are:

Article 40 of the Trademark Law of the People's Republic of China: "A trademark registrant may license others to use its registered trademark by signing a trademark license contract. The licensor The licensee shall supervise the quality of the products using its registered trademark.

If the licensee uses another person's registered trademark with permission, he must use the registered trademark on the products. Indicate the name of the licensee and the origin of the goods.

The trademark license contract should be reported to the Trademark Office for filing. ”

Things to note before trademark licensing

① Trademark licensing. Rights status

First of all, it is necessary to examine whether the licensed trademark has been authorized, how long the rights protection period is, or whether the registration has been renewed in time after expiration. The exclusive right to trademark in my country is based on the principle of registration. If the trademark has not been registered or has not been renewed upon expiration, or has been revoked, it does not enjoy the protection of the exclusive right to trademark. Anyone can use it on similar or different types of goods, even Being preempted by others, thus affecting the sales of the goods in the market. Although the transfer of an unregistered well-known trademark can prevent others from preemptively registering it according to the provisions of the Trademark Law, the determination of whether it is well-known is uncertain and the risk is high; of course, if the licensee is an unregistered well-known trademark, you will also enjoy the trademark Protection of exclusive rights. However, whether a trademark is well-known is in a state of flux and the rights are unstable. It is best to transfer well-known trademarks that have been recognized by the Trademark Office or judicial authorities.

If the trademark is still in the application process, you should be careful whether to accept the transfer. Trademark registration in my country follows the principle of substantive review and must meet the conditions stipulated in the Trademark Law before it can be authorized. The number of trademark applications is very large, junk trademarks are rampant, and the trademark review backlog is serious. The smoothest trademark registration cycle can be as long as three years. If the trademark opposition procedure is passed, the trademark registration cycle can be as long as more than 10 years. If you are assigned or licensed a trademark that is in the application process, you will face huge risks, because the legal status of such a trademark is unstable and may not be registered due to lack of distinctiveness, infringement of prior rights, etc.

If a trademark has been authorized but is in dispute and is at risk of being revoked, it is best to wait for the outcome before deciding whether to assign or use it.

②The owner of the trademark rights

Only the trademark owner or his specially authorized agent has the right to authorize the use of the trademark. Before making a transaction, you must check whether the trader is the real trademark owner. You can learn about the real rights owner by checking the trademark registration certificate, checking the trademark announcement or the China Trademark Network.

It should be noted that if the licensor itself is already the licensee of the trademark, it must be checked whether the right holder in the original license contract authorizes the licensee to transfer or license the licensed trademark again.

If there is no agreement or the agreement is unclear in the license contract, the licensee has no right to sublicense or transfer. If the licensor itself is already the assignee of the trademark, be sure to check whether the original transfer contract has been reviewed and approved by the Trademark Office. The trademark transfer contract must be approved and announced by the Trademark Office, otherwise it will not be legally effective. At this time, the trademark transferee is not the real right holder and has no right to license or re-transfer the trademark.

③The scope of validity of trademarks

The exclusive right of a trademark is restricted by geography and is only protected by the exclusive right in the place of registration. Before being allowed to use, the company must check whether the trademark has been approved and registered in China. If the company's products are mainly for export, it must also check whether the trademark has been registered in the place of export. Otherwise, trademark infringement disputes may arise in the place where the product is sold.

Hope it helps you and hope you will adopt it