As we all know, everything is risky, including trademarks. In fact, trademark transfer involves certain risks, and every procedure is very important to the transferee. So, what are the legal risks involved in trademark transfer?

The trademark right itself has defects: The "right defect" here refers to any legal fact that may damage the integrity of the transferred trademark rights, which may cause the transferee to encounter various problems when using the transferred trademark. Various restrictions, some of which may even make it difficult for the transferee to obtain trademark rights, mainly include:

1. Disposal without right

In real life, many trademark transferors When the right of disposal is restricted, a trademark transfer agreement is still entered into with the transferee, resulting in ownership disputes. For example, signing a transfer or licensing contract without the consent of the trademark owner.

2. Setting various rights burdens on rights

The rights burdens during the trademark transfer process mainly include other people’s priority rights to compensation and excessive rights set on the transferred trademark. The long license period or the encumbrances such as pledge rights, mortgage rights, etc. that prevent the transferee from smoothly using and obtaining the complete rights of the transferred trademark.

Generally speaking, the burden of rights established on the transferred trademark will deprive the transferee of the most important interest in the trademark. Therefore, the transferee needs to pay attention to the transferred trademark before transferring it. Conduct a more comprehensive investigation into the burden of rights on the trademark.

3. The rights status is unstable

A trademark will go through multiple stages from application to successful registration to expiration and waiting for renewal. During these periods, the trademark is very likely to be It will go through administrative dispute procedures such as rejection, withdrawal, opposition, invalidation and other administrative dispute procedures. If the transferred trademark is in the above administrative dispute procedures, its rights will be in an unstable state, and the trademark rights will face the risk of loss.

According to the provisions of the Trademark Law, anyone who has registered a trademark for three years can apply to the Trademark Office for cancellation of a registered trademark that has not been used for three consecutive years. For a trademark that has been registered for three years, the transferee Before assigning a trademark, a person should conduct a thorough investigation into the use of the assigned trademark in the previous three years to prevent others from filing an application to withdraw the trademark.

In addition, it should also be clarified whether the transferred trademark is in the process of administrative disputes such as trademark opposition and invalidation declaration, so as to prevent the transferred trademark from eventually becoming invalid.

There are many risks in the trademark transfer procedure: Article 42 of the current Trademark Law stipulates the formal requirements for trademark transfer. However, in the face of various legal disputes that arise in real life, the current Trademark Law stipulates that The trademark transfer system is still incomplete, which leads to endless procedural risks in the trademark transfer process.

1. It is difficult to avoid errors in substantive rights if formal review is adopted for trademark transfer procedures

Article 42, paragraph 1, of the Trademark Law clearly stipulates: “Where a registered trademark is transferred, the transferor and the transferee shall The transferee should sign a transfer agreement and submit an application to the Trademark Office at the same time. The transferee should ensure the quality of the registered trademark. "

The Trademark Office requires the transferor when reviewing the transfer application. Sign or seal the transfer application with the transferee. Based on the need for efficiency, the Trademark Office’s review of the signature or seal is mainly a formal review, checking whether the signature or seal is consistent. Forged signatures or seals It is often difficult to detect in time through formal examination, resulting in illegal transfers.

2. There is a time lag between the trademark transfer contract taking effect and the formal transfer of trademark rights

Although trademark rights are private rights, trademark transactions are often closely related to public interests, so , the free circulation of trademarks must be subject to certain restrictions. Paragraph 3 of Article 42 of the "Trademark Law" stipulates: "The Trademark Office will not approve transfers that are likely to cause confusion or have other adverse effects." Paragraph 4 stipulates that "transfer registration" After the trademark is approved, it will be announced. The transferee will enjoy the exclusive right to use the trademark from the date of announcement. "It can be seen from these provisions that my country does not adopt the principle of complete autonomy for the transfer of registered trademarks but adopts an approval system. That is, the transfer of a trademark must be approved by the Trademark Office, and the exclusive right to register a trademark will be transferred from the date of announcement.

The effective date of the trademark transfer contract and the actual transfer of trademark rights do not occur at the same time. There is actually a certain time lag between the effective date of the contract and the actual transfer of trademark rights. After both parties apply for transfer to the Trademark Office, the Trademark Office Before the announcement, an approval process is required.

Therefore, after signing a trademark transfer contract, if the transfer application is not approved by the Trademark Office or is approved but not announced, or the transferor fails to register after signing the agreement, it is very likely to lead to disputes.

3. If the scope of the collective transfer is not clearly defined, it will be detrimental to the future development of the transferee

The "Trademark Law" stipulates: "Where a registered trademark is transferred, the trademark registrant must "Identical or similar trademarks registered on the same or similar goods shall be transferred together." The Trademark Law limits the scope of collective transfer to "identical or similar trademarks registered on the same or similar goods (services)." However, in actual situations, it is not uncommon for trademark transferors to divide and transfer their trademarks. Some trademark owners retain the registration of the transferred trademark on the same, similar goods, or highly related goods, so as to facilitate the painstaking efforts of others in the future. of goodwill.

The seemingly simple trademark transfer actually contains many hidden risks. The legal risks in trademark transfer listed by the editor in this article are only a very small part. In practice, there are many risks arising from trademark transfer. Legal disputes vary widely. To better prevent these risks, you really need an experienced agent to conduct a comprehensive investigation and give professional advice before the trademark transfer, so as to alleviate the worries of the transferor and the transferee. If you still have any questions about trademark registration related matters, please feel free to log in to Zhejiang Bajie Intellectual Property Trademark Transfer Network to discuss with us. If relevant industries need trademark registration or trademark transactions, you can also log in to the Zhejiang Bajie Intellectual Property Trademark Transfer Network to view more quality trademark recommendations.