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Trademarks transfer, licensing and other transactions seem very simple, however, there are still many problems. Here, from the perspective of risk investigation, some common risks that may exist in trademark transactions are listed to remind enterprises to prevent regrettable or even regretful results, or to minimize the impact of negligence.

Trademarks transfer, licensing and other transactions seem very simple, however, there are still many problems. Even a star company like Apple has been involved in the trademark transfer of iPad. Fortunately, many low-level mistakes made in trademark transactions are easier to solve through due diligence.

as an important part of intellectual property transactions, there are many forms of trademark transactions. Besides 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 their own different risks, but they also have 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 of negligence.

1. Has the trademark been approved for registration

If the traded trademark is not registered at all, or has not been renewed in time when it expires, or has been revoked or invalid according to law, there is no legal exclusive right to use the trademark, and anyone may even be registered by others, thus hindering his rights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. However, it is not easy to claim the unique names or appearances of well-known trademarks or well-known commodities.

2. Is the trademark still being applied for registration

This is a continuation of the previous question. In some cases, although a trademark has not been approved for registration, it may have formally applied for registration. However, such a trademark may not be approved for registration because of legal obstacles such as lack of distinctiveness and infringement of prior rights.

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 have admitted that unregistered trademarks can be transferred or licensed, but in this way, the legal and commercial risks of the transferee and the licensee are extremely great. Therefore, it is necessary to find out the trademark registration of the other party, and of course, it should be clear when signing the contract 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 during 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 the trademark registration, you should also know whether the person you are dealing with has the right to dispose of the registered trademark, whether he is the right holder (registrant or owner) of the registered trademark, or an agent specially authorized by the right holder, or a licensee who is allowed to sublicense. If the trademark is owned by * * *, has it been approved by * *? You can check the trademark registration certificate, trademark transfer contract, transaction authorization, or inquire about trademark announcement and trademark website to find out who is the real owner of the traded trademark and who has the right to transfer, license or pledge the trademark at present.

4. Where is the trademark registration valid

The validity of trademark right is regional, the registered trademark is valid only in China, and the registered trademark is valid only in France. If you want to obtain the ownership or use right of a trademark in China, then you must confirm that the trademark has been approved for registration. If you want to use this trademark to manufacture goods and export to Europe at the same time, then this trademark needs to be registered in the relevant European countries in addition to registration, otherwise you may encounter trademark infringement trouble when exporting.

5. When will the trademark registration expire?

There is a time limit for trademark registration. The validity period in China's trademark law is 1 years, but the registration can be renewed after the expiration. The key issue 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 their own commercial rights and interests.

6. Is the traded trademark consistent with the registered trademark

Although the registered trademark of the other party is approved, is the traded trademark consistent with the registered trademark? 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. ? A trademark that is inconsistent with a registered trademark (especially one that is quite different) may not enjoy the exclusive right to use the trademark. If you buy and use the registration mark carelessly, it may also constitute an illegal act of changing the registered trademark by yourself or impersonating the registered trademark.

7. What are the goods or services designated for use 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 obligee has exceeded the approved scope of use, issued a license or engaged in transfer, because this may lead to trademark infringement and other problems, if others have registered the same or similar trademarks on those goods or services that the obligee has exceeded the approved scope of use. In addition, it is also very important to check whether the product or business scope you need to use is 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 a trademark?

At present, there are many elements of a trademark, including words, graphics, letters, numbers, three-dimensional signs, color combinations and sounds, and the combination of the above elements. Among them, graphics, three-dimensional signs, sounds and words (such as advertising language) may 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 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. Therefore, if the trademark owner entrusts others to create the trademark, even if the trademark enjoys copyright without 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 arises.

9. Does the trademark registration meet the authorization conditions?

Trademark registration needs to meet a series of authorization conditions, such as distinctiveness, nonfunctionality, non-prohibition of signs, non-infringement of others' rights, etc. Therefore, it is necessary to evaluate the traded trademarks so as to prevent the trademarks from being declared invalid in the future because they violate the legal provisions or infringe others' rights. For example, the weak distinctiveness of trademarks has a great impact on trademark protection, and trademarks with weak distinctiveness are 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 protection scope or exclusive scope of a trademark.

1. Does the trademark become a generic name

According to Article 49, paragraph 2, of the new Trademark Law in 213, if a registered trademark becomes the generic name of the goods it has approved for use, any unit or individual may apply to the Trademark Office for cancellation of the registered trademark. In fact, Escalator, Thermos, Aspirin and Nylon were originally registered trademarks of famous enterprises, and later they all became common names of related products. In our country, Usb flash drive? (u disk),? 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.

11. Are there identical or similar trademarks?

If you acquire the ownership of the other party's trademarks through trademark transfer, enterprise merger, etc., in order to avoid the market confusion caused by the existence of relevant commercial marks in the future, or even violate the mandatory provisions of the law, you need to check whether the other party has commercial marks similar to the traded trademarks, and further consider whether it is necessary to transfer all these related commercial marks such as defensive trade mark and United trademarks.

according to paragraph 2 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. ? Paragraph 3 of this article stipulates: The Trademark Office shall not approve the transfer that may easily lead to confusion or have other adverse effects, and 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 shall be transferred together. This is a mandatory requirement in trademark law, otherwise the transfer will encounter legal obstacles.

12. Whether to tolerate cross-class registered identical or similar trademarks

The trademark law does not require that identical or similar trademarks registered on different or dissimilar goods must be transferred together. However, from the perspective of commercial prudence, it is still necessary to evaluate which categories of identical or similar trademarks should be acquired together to avoid future business confusion. For example, the obligee has a trademark registered on the 12th class car and the 28th class toy respectively, so it is better to buy the trademark on the toy together when buying the trademark on the car. Don't belong to two companies after the purchase, otherwise the toy car will conflict with your real car in trademark use in the future.

13. Is there a trade name or domain name that is the same as the trade mark

In order to effectively protect the trademark, some enterprises not only registered the defensive trade mark and the joint trademark, but also kept the trademark consistent with the trade name and domain name. Although you bought the trademark, but 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 the other party was still called Mickey Toy Company after the trademark was sold. After all, it was an ambush bomb. Imagine if the other person is still making toys, although they can't use them? Mitch? Trademark, but still prominently marked on toy goods or their packaging? Mickey toy company? Will consumers be clearly divided?

14. Are there any restrictions on the pledge of the trademark?

Assuming that a registered trademark has been pledged and then transferred to you, it is obviously 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 to be paid in priority with the price of the exclusive right to use the trademark by auction or sale. As a result, the trademark you paid for will eventually fly to the arms of others.

15. Is there a license constraint on the trademark

Besides the pledge of the trademark right, there are constraints on the trademark 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 there is already 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 come to interfere. If the assigned trademark has been licensed to the outside world, according to? Business does not break the lease? Similar rules, the transferee is still bound by the prior license, and there may even be cases where the transferee enjoys the ownership but cannot use it (such as the third party enjoys the exclusive license).

16. Is there any dispute about the trademark

Is there any dispute about the ownership, cancellation of registration or invalidation 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 invalidation. It is worth noting that in some trademark contract dispute cases, if there is no clear agreement, even though the trademark registrant has not disclosed the facts of trademark dispute, he does not need to bear the liability for breach of contract.