Abstract: Trademark right transfer refers to the rights transfer process in which a person who legally enjoys the exclusive right to use a trademark transfers the exclusive right to a trademark to another person and charges a certain fee. So how to transfer trademark rights? What are the forms of trademark rights transfer? Oh, let's take a look. Transfer of trademark rights, how to transfer trademark rights, forms of transfer of trademark rights

Inheritance of trademark rights:

The trademark right applied for registration by an individual businessman is a property right.

If the trademark registrant dies during the validity period of the trademark, his heirs should promptly report to the Trademark Office, change the trademark registration, change the name of the registrant, and become a new registrant, that is, inherit the trademark rights. It also has the right to transfer the exclusive right to use a trademark, and to license others to use it through a trademark licensing contract and collect royalties. When the exclusive right to use a registered trademark is infringed, you can also request the infringer to stop the infringement and compensate for losses. The heirs inherit the exclusive rights to the trademark during the validity period of the trademark. If the registration expires, the heirs can apply for renewal to continue to enjoy the exclusive rights. If the heir fails to apply for renewal, the exclusive right to use the registered trademark will be lost.

The exclusive rights to registered trademarks enjoyed by enterprises and institutions cannot be regarded as the personal property of a certain individual, so they cannot be inherited as personal inheritance, but can only be transferred.

Main matters of transfer:

The transferor guarantees that he is the owner of the trademark, and explains to whom and what type of trademark use licenses were issued before signing the contract, as well as the original use The licensing contract stipulates the obligations of the trademark owner.

If the original license contract stipulates that the trademark owner shall not transfer its trademark rights to others, the trademark owner will not be eligible to enter into a transfer contract.

If the assignor transfers all its trademark rights in all countries where it has obtained registration or applied for registration, the assignor should also ensure that by the time of signing the contract, it has fulfilled its obligations in countries that have not approved its registration. All registration application procedures have been completed, and the relevant applications have not been rejected. transfer price. The scope of rights of the transferee after transfer.

If the transferor transfers all of its trademark rights registered or applied for registration in all countries, the two parties should also agree that after the transferred application is approved, the transferee will enjoy all exclusive rights.

If the transferor will take back the trademark rights on time, the transfer period should be agreed upon. If the transferee is required to guarantee the quality of the goods indicated by the trademark, the transferor shall provide the technical know-how for producing the relevant goods, product instructions, product packaging laws, product maintenance laws and related technical services as agreed.

The transferor guarantees not to use the transferred trademark on goods that are similar or identical to the transferee’s goods within the validity period of the contract and within the effective territory of the trademark registration.

The transferee shall not disclose the business secrets or technical secrets provided by the transferor to the transferee for the transfer of trademark rights. The transferred trademark name, style, registration country, registration number, the date of next renewal, the categories of goods or services covered by the trademark registration and their specific names.

If the transferor transfers all its trademark rights registered or applied for registration in all countries, the contract should also list the name of the country that has approved the registration, the name of the country that has accepted the registration application, and the name of the registered country. The category and specific name of the goods or services covered by the trademark and the trademark to be registered.

Transfer procedures:

Which party shall handle the filing procedures.

China’s Trademark Law stipulates that “a trademark license contract shall be reported to the Trademark Office for filing” (Article 43, Paragraph 3).

However, the trademark laws of some countries stipulate that the licensing contract should be registered, so foreign trademark licensing contracts often have clauses that stipulate the contract registration procedures.

If the licensor of the trademark license contract has foreign nationality. If the licensee has Chinese nationality, the licensor shall be responsible for the contract registration procedures or filing procedures in that foreign country.

In order to prevent deceptive consequences arising from the issuance of a trademark license, the contract should stipulate that the quality of the licensee's goods should not be lower than the quality of the same goods of the licensor.

According to the relevant provisions of my country’s Trademark Law, the licensor has both the right and the obligation to supervise the quality of the goods on which the licensee uses its registered trademark; the licensee is obliged to accept the supervision of the licensor and is obliged to ensure that The quality of the goods using the registered trademark.

In order to ensure the quality of the goods, both parties should also agree on other relevant measures, such as the licensor providing samples, technical guidance and technical services to the licensee. In addition, both parties should also agree on relevant confidentiality obligations.

Tips on transfer issues:

First, trademark rights have a limited time limit. Therefore, before entering into a trademark rights transfer contract and a trademark right use license contract, you should first review the contract. Whether the exclusive right of the subject trademark is still within its validity period, how long the validity period is, whether the registration renewal procedures have been completed, etc. This is to prevent certain units, individual industrial and commercial households, individual partnerships, etc. from deceiving the other party by transferring the trademark that is no longer protected by law, that is, the trademark without the exclusive right to use the trademark to others or allowing others to use it.

Second, the transfer of trademark rights must be carried out in accordance with the methods and procedures prescribed by law, and no transfer is allowed.

Third, if a trademark registrant allows others to use its registered trademark, it must sign a trademark license contract. The licensor and the licensee shall, within three months from the date of signing the license contract, submit a copy of the license contract to the county-level industrial and commercial administration authority where they are located for review. The licensor shall submit it to the Trademark Office for filing, and the Trademark Office shall make an announcement. .

Fourth, when transferring registered trademarks for human medicines, tobacco products and other goods for which the country stipulates that registered trademarks must be used, the transferee should provide supporting documents from the relevant departments: For the transferee’s registered trademarks for medicines If the registered trademark of cigarettes, cigars and packaged tobacco is transferred, the certificate of production approval by the national tobacco authority shall be attached; if the registered trademark of the transferred cigarettes, cigars and packaged tobacco is approved by the national tobacco authority, the registered trademark must be used by the transferee in other countries. Registered trademarks for other goods must be accompanied by approval documents from the relevant competent authorities.

Fifth, if you license others to use registered trademarks for human medicines, tobacco products, and other products for which the state stipulates that the use of registered trademarks must be used, a copy of the licensing contract must be submitted to the county-level industrial and commercial administration authority for review. When doing so, the licensee shall attach the certification documents issued by the health administration department or the production approval documents of the national tobacco authority, or the approval documents of other relevant competent authorities. If the above-mentioned approval documents are not provided, and the applicant still refuses to provide the above-mentioned approval documents when ordered to do so by the industrial and commercial administration or the Trademark Office, the licensee shall be deemed to be unqualified and the trademark right use license contract shall be invalid.

Sixth, when signing a trademark rights transfer and licensing contract, you should examine whether the other party has the corresponding qualifications, that is, whether it is a legally established enterprise, institution, social group, individual business owner, individual partnership, or In accordance with the agreement signed between the country where it belongs and the People's Republic of China or the international treaty that the country has signed, or according to the principle of reciprocity, it can become the subject of a trademark right transfer and licensing contract. For persons who do not have the corresponding qualifications, the counterparty shall not sign a trademark rights transfer and license contract with them; if the signing procedures have been completed, the contract shall be invalid or deemed to have not been established at all.

Principles for transfer:

First, a trademark transfer contract and a trademark license contract concluded on the basis of equality, voluntariness, and consensus through consultation are legally binding on both parties. ; Either party to the contract shall perform its obligations stipulated in the contract seriously and comprehensively, and shall not refuse to perform or incompletely perform for other reasons. Except as otherwise provided by law.

Second, the transferee of a contract for the transfer of a registered trademark shall ensure the quality of the goods using the registered trademark, and shall not use the registered trademark as a cover for its own production and sale of counterfeit goods.

Third, if someone else’s registered trademark is used with permission, the name of the licensee and the place of origin of the goods must be marked on the goods using the registered trademark.

Fourth, the licensor in the trademark license contract should supervise the quality of the goods used by the licensee using its registered trademark. The licensee shall ensure the quality of the goods using the registered trademark. Otherwise, the licensor has the right to terminate the trademark license contract.

Fifth, the transferor of a trademark right transfer contract shall not use the transferred trademark on goods that are similar or identical to the transferee’s goods during the validity period of the contract and within the effective area of ??trademark registration. Unless there is a trademark license contract with the assignee. Otherwise, the transferee has the right to sue the transferor of the original trademark rights transfer contract for infringement of the exclusive right to use the trademark.

Sixth, if the licensee obtains an exclusive trademark license through a trademark license contract, the licensor shall not use the registered trademark, nor may the licensor sublicense other people to use the registered trademark. If the licensee obtains a non-exclusive trademark use license through a trademark license contract, the licensor not only still has the right to use its trademark, but also can issue the same non-exclusive trademark use license to any third party. .

Seventh, the licensee in the trademark license contract shall not allow any other third party to use the registered trademark, unless there is a clear consent from the trademark owner, the licensor in the trademark license contract. Authorization.

Eighth, if there is a dispute between the trademark rights transfer contract and the trademark rights license contract, the two parties can resolve it through negotiation on their own, or through mediation or arbitration. If none of the above methods are feasible, the dispute will be finally resolved through litigation. .

Ninth, if the dispute between the trademark rights transfer contract and the trademark rights license contract is resolved through litigation, the case shall be under the jurisdiction of the people's court of the defendant's domicile or the place where the contract is performed.

Transfer form:

The transfer of a registered trademark is an act by which the trademark registrant transfers the exclusive right to use the trademark to another party in accordance with legal procedures during the validity period of the registered trademark.

The transfer of registered trademarks generally takes the following forms:

Contract transfer

The transferor stipulates the contents of the transferred registered trademark and mutual rights through a contract , obligations and liability for breach of contract, etc. This form of transfer is generally paid, that is, the transferor charges a certain transfer fee by transferring the exclusive right to a registered trademark.

Succession and transfer

There are two situations for the inheritance and transfer of a registered trademark: (1) After the death of the registered owner (natural person), that is, the end of his life, there are heirs according to the inheritance procedure. Inherit all the registered trademarks owned by the deceased during his lifetime. (2) Succession and transfer when the enterprise as the owner of the registered trademark is merged or merged.

Transfer due to administrative order

This form of transfer generally occurs in countries with public ownership. The administrative orders mentioned here are mainly those plans and administrations that cause the transfer of property. For example, if my country's state-owned enterprises are divided, merged, dissolved or transferred according to administrative orders, the subject of registered trademarks will inevitably change.

Transfer method:

Applicants can entrust an organization with trademark agency qualifications recognized by the State Administration for Industry and Commerce to act as an agent, or they can go to the Trademark Registration Hall of the State Trademark Office to apply directly.

At present, there are nearly 800 nationally recognized trademark agency organizations***, distributed in various provinces, autonomous regions, and municipalities across the country.

Applicants should decide whether to entrust an organization with trademark agency qualifications to handle the transfer of a registered trademark or go directly to the Trademark Office to handle it based on their own specific circumstances. If the applicant is familiar with trademark laws, regulations and related procedures, and the postal service at his usual residence or place of business is in good condition, he can go directly to the Trademark Office; if he does not meet the above conditions, it is best to entrust a trademark agency to act as an agent;

Foreigners or foreign enterprises that do not have a regular residence or business place in China should entrust a trademark agency to handle the transfer registration in China.

In the process of reviewing trademark transfers, the Trademark Office often issues various documents to the applicant, such as notices of correction, notices of rejection, etc. Most of these documents require the applicant to make certain modifications to the original application content and respond. These documents are generally mailed through the post office. In view of the fact that the postal channels in some areas of our country are not very smooth, and some applicants' addresses have changed, applicants often fail to receive documents issued by the Trademark Office, which affects the transfer registration process.

Trademark agents in trademark agency organizations are familiar with trademark laws and regulations, and are proficient in trademark business. They can more accurately understand the intentions of the client and the Trademark Office, and assist the parties to modify the requests issued by the Trademark Office. Accurate revisions are made to the document so that the review of the transfer registration application proceeds smoothly.