When a trademark registrant violates the principle of good faith and licenses the same trademark to others for use and transfers it to a third party, conflicts often arise between the transfer of the registered trademark and the license. Regarding the situation where licensing comes first and transfer comes later, Article 20 of the "Interpretation of the Supreme People's Court on Applicable Legal Issues in the Trial of Trademark Civil Dispute Cases" clearly stipulates that "the transfer of a registered trademark does not affect the trademark license contract that was in effect before the transfer." effect, unless otherwise agreed in the trademark license contract."

First, the transfer of a registered trademark will not affect the validity of the registered trademark license contract concluded in accordance with the law before the transfer. The transferee and licensee of the registered trademark should continue to perform according to the contract after the transfer. , but if there are other provisions in the registered trademark license contract, such as stipulations that no transfer is allowed during the license period, or that the registered trademark license contract is terminated after transfer, the agreement shall be followed.

Second, the transfer contract of a registered trademark will not be invalidated by the existence of a registered trademark license contract. The law does not clearly stipulate that a registered trademark is not allowed to be transferred after being licensed to others to use.

Therefore, we believe that in the absence of a stipulation in the registered trademark license contract, in principle, the transferee of the registered trademark cannot claim rights against the licensee, but should continue to perform the trademark license contract. (Refer to the case (2010) Judgment No. 401 of the Guangdong and High Court of Justice, the Trademark Licensing Contract Dispute between Zhuhai Shuangxi Electric Co., Ltd. and Guangdong Ouge Electric Co., Ltd., the relevant content has been marked)

Then , how should the transferee safeguard its rights?

First, claim the transferor’s liability for breach of contract

According to Article 150 of the Contract Law of the People’s Republic of China Article 1, "The seller shall have the obligation to ensure that a third party shall not assert any rights against the buyer with respect to the subject matter delivered, except as otherwise provided by law." It stipulates the warranty against defects in title in the contract for the sale of goods. Specifically, the seller's warranty obligations include: (1) The seller has legal rights to the subject matter of the sale, that is, it has ownership or disposal rights; (2) The seller shall Ensure that there are no rights that others can claim on the subject matter; (3) the seller should ensure that the subject matter does not infringe the intellectual property rights of others. If the seller fails to perform its obligation to guarantee rights, resulting in the defect of rights in the subject matter not being removed after the conclusion of the contract, this is a situation where the seller fails to perform its debts, and the buyer can request the seller to assume liability for breach of contract. If the purpose of the contract cannot be realized due to a defect in rights, this constitutes a fundamental breach of contract and the buyer may unilaterally terminate the contract.

However, does the warranty against defects in rights in the goods sales contract system apply to the transfer of rights (such as patent rights, trademark rights, copyrights, etc.)?

We believe that intellectual property rights As an intangible property right, it is only different from "things" in the traditional sense in its form of expression. Its core content is still a kind of property right. In essence, the transfer of rights is the same as the transfer of things. And according to Article 174 of the "Contract Law of the People's Republic of China", "If the law has provisions for other paid contracts, the provisions shall prevail; if there are no provisions, the relevant provisions of the sales contract shall be referred to." Therefore, regarding the warranty liability for defects in rights in the transfer of intellectual property rights, in the absence of other legal provisions, the warranty system for defects in rights in the sales contract should be applied, and the transferor's liability for breach of contract should be held accountable. (Reference Case (2012) Civil Ruling No. 1501 of the People's Republic of China on the Trademark Licensing Contract Dispute between Tianjin Development Zone Taisheng Trading Co., Ltd. and Beijing Yehongda Economic and Trade Co., Ltd. and Guangzhou Ruixiangchun Leather Co., Ltd., that is, the knowledge was applied Property rights defect guarantee system)

Second, claiming that the contract is revocable

According to the second paragraph of Article 54 of the "Contract Law of the People's Republic of China", " If one party resorts to fraud, coercion or takes advantage of someone else's situation, the contract is entered into by the other party against its true intention, and the injured party has the right to request the people's court or arbitration institution to change or cancel the contract."

The so-called fraud means deliberately concealing the true situation or deliberately telling the other party false information, deceiving the other party, and inducing the other party to make a wrong expression of intention and conclude a contract with the other party.

Therefore, we believe that because the transferor did not inform the transferee of the true fact that the registered trademark has been licensed to others, the transferee fell into a wrong understanding, that is, if the transferee knew this fact, he would not will conclude a contract with it, then the transferee can claim that the other party committed fraud when entering into the contract, and thus claim that the transfer contract is a voidable contract.

Third, claim to terminate the contract

If the original trademark owner licenses the registered trademark to a third party in the form of an exclusive license, it means that the transferee cannot use it himself, which may If the purpose of the contract cannot be realized, according to the relevant provisions of the Contract Law, the transferee may exercise the statutory right to terminate the contract and claim to terminate the contract.

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