What you need to know when transferring trademarks in China

1. Conditions for the Transferor

To carry out the transfer of a trademark, the transferor must be the owner of the trademark as recorded on the Trademark Registration Certificate or the applicant of the pending trademark application (in the case of transferring an application). The name of the trademark owner on the certificate must match the name of the transferor in the transfer application. A common issue arises when the transferor has changed its name but has not completed the procedure to update the owner’s information on the Trademark Registration Certificate, resulting in the transfer application being rejected. In such cases, the transferor must update the new name on the Trademark Registration Certificate before proceeding with the trademark transfer. 

2. Conditions for the Transferee 

The transferee must meet the condition of being the owner of the trademark as stipulated by Chinese trademark law.

3. Conditions for transferred trademarks  

The trademark assignment needs to meet the following requirements: 

• The transfer of trademarks must not create confusion for consumers. Accordingly, all trademarks identical or similar to the trademark being transferred on identical or similar goods must also be transferred simultaneously. 

• For trademarks with multiple classes, the transfer of the trademark must involve the transfer of all classes of the trademark; it cannot be limited to the transfer of just one class of the trademark. 

4. Statutory required documents 

• Signed POA (power of attorney) by the assignor and the assignee;

• Copy of certificate of incorporation of the assignor (ID card/passport of natural person); 

• Assignment agreement. (Please be advised that there is no standard form of Statement of Trademark Assignment, CNIPA accepts Deed of Assignment made by the assignor and assignee based on agreement); 

If the trademark holder has terminated its existence (as a result of consolidation, merger, or restructuring, court ruling, …) , there is no requirement to provide the assignor’s identification document and power of attorney, and the application form does not need the assignor’s seal or signature. Nonetheless, appropriate certification or legal documents must be furnished to establish the inheriting rights to the respective trademark.  

5. Step by step process and timeline

Step 1: preparing the necessary documents for submission to the China Trademark Office; 

Step 2: submitting necessary documents of the assignment application to the China Trademark Office;

Step 3: formal examination of the China Trademark Office;  

Step 4: issuing the payment notice by the China Trademark Office.

The total duration for executing trademark transfers in China (in cases where no adjustments to the dossier are required) is typically 2 to 4 months from the date of submission. 

6. Common Risks and Issues

For many parties, the transfer of a trademark is merely a routine administrative procedure. In most cases, this is true. However, this process is not without significant risks or legal issues. In fact, there are several legal concerns that need to be considered to ensure a smooth trademark transfer in China and to best protect the parties’ interests. 

• The transferred trademark may fall under the conditions for termination of validity. 

• A registered trademark can be canceled if it is not used continuously for three years without a valid reason. 

• The transferred trademark may be similar to the trade name of the transferor, leading to consumer confusion. 

• The transferred trademark may have been applied for in bad faith or without the right to register, which could result in a request for cancellation or termination of validity. 

7. Common questions when transferring trademarks in China

(1) When should trademark transfer occur? 

Trademark transfer can occur in various situations, such as business restructuring, changes in ownership, dissolution of a company, inheritance, or termination of existence or owners. It’s also done to optimize the management of intellectual property assets. 

(2) Is notarization required for transfer documents in Vietnam? 

Notarization of transfer documents is not mandatory, but it’s recommended to avoid disputes later on. 

(3) Can you transfer trademarks during the examination stage? 

Yes, you can transfer trademarks even if they are in the examination stage. The procedure involves filing an application for trademark transfer. However, note that the trademark application may still be rejected for reasons unrelated to the transfer. 

(4) How long does the CNIPA take to review trademark transfer applications? 

Typically, the processing time is around 4-6 months. However, in some cases, we’ve seen processing times as short as 2 months. Keep in mind that these timeframes are approximate and based on past experiences; they cannot guarantee future processing timelines.  

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