China trademark administration authority introduces some new practices
Recently, China Trade Mark Office (CTMO) and China Trademark Review and Adjudication Board (TRAB) have introduced some new practices related to the recordation of trademark license agreement, review of official refusal of the Chinese trademark applications and recordation of assignment of Chinese trademark applications/registrations.
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1. Suspension and Consolidation of Trademark Review Applications
Where a trademark applicant applies for a review of the official refusal of his Chinese trademark application before the TRAB, and at the same time lodges an opposition or non-use cancellation against the cited trademark before the CTMO, the TRAB would move on to review the case without waiting for CTMO’s ruling. In other words, a request for suspension of the review of official refusal on the grounds that the applicant has taken action against the cited trademark through opposition or cancellation on non-use proceedings would no more be necessarily acceptable.
While, if the opposition or non-use cancellation has entered into the stage of substantive examination, the applicant of the trademark application may emphasize such a fact and it is very likely that the TRAB will agree to suspend the review of official refusal pending the outcome of the opposition/non-use cancellation cases.
If a trademark applicant has a case on review of official refusal of Chinese trademark application at the TRAB, and meanwhile, he files a review of opposition, review of non-use cancellation and/or cancellation in dispute against the trademark cited to refuse his subject trademark application, which should also be filed before the TRAB, the applicant may request the TRAB to consolidate the two types of related cases. The TRAB shall accept such consolidation request and make its decision on the review of opposition, review of non-use cancellation and/or cancellation in dispute cases concerning the cited trademark first, and then, make its decision on the review of official refusal of the applicant’s Chinese trademark application.
2. Recordation of Trademark Assignment
When applying for recordation of assignment of a Chinese trademark application/registration, the trademark applicant needs to submit before the CTMO an Application Form duly signed by the assignor and the assignee and a Power of Attorney duly signed by the assignee, if he entrusts an agent to handle the recordation. Now under the new practice, the applicant is further required to submit photocopies of the documents testifying the identity and/or legal existence of both the assignor and the assignee, such as ID card or passport for individual assignor and assignee, the Certificate of Good Standing or the Business License for a company.
3. Recordation of Trademark License Agreement
When applying for recordation of trademark license agreement, the applicant needs to submit before the CTMO the original license agreement duly signed by the licensor and the licensee, and the Application Form and a Power of Attorney duly signed by the licensor if he entrusts an agent to handle this recordation application.
Now under the new practice, the applicant is further required to submit photocopies of the documents testifying the identity and/or legal existence of both the licensor and the licensee. The CTMO will also examine as whether the license agreement contains the following clauses:
1. Names of the parties of the license agreement;
2. Information on the licensed trademark(s), such as the registration number(s), trademark specimens and/or description(s) of the licensed mark(s);
3. The licensed goods/services should not exceed the original scope as registered at China Trademark Office;
4. The term of the license;
5. The clause stating that the licensor shall supervise the quality of goods/services on which the licensed trademarks are used by the licensee.
6. The clause stating that the licensee shall specify his name and place of origin on the commodities on which the licensed trademarks are used by the licensee.
So it is advisable to ask for the evidence showing the legal existing status of both the licensor and the licensee and add the above clauses to a draft license agreement.