The change of a company’s name and/or address is very common in the daily business activities, while many companies have no idea about the influence of change of their name and/or address.   Today, let's explore the chain reaction of enterprise name and/or address change on its Trademarks.

LEGAL BASIS

According to Article 41 of Chinese Trademark Law, where the name, address or any other registered matter of a trademark needs to be changed, an application for change shall be filed before the National Intellectual Property Administration, PRC (“CNIPA”).

According to Article 17.1 of Implementing Rules of Chinese Trademark Law, where the name, address, agent, document receiver of a trademark needs to be changed or some designated goods needs to be deleted, an application for change shall be filed before the CNIPA.

According to Article 30 of Implementing Rules of Chinese Trademark Law, where the name, address or any other registered matter of a trademark needs to be changed, an application for change shall be filed before the CNIPA. As for the application for name change, the official document showing the name change should also be filed.  Where the CNIPA approves the change application, it shall issue a corresponding certificate to the trademark registrant and publish it; and if the CNIPA disapproves the change application, it shall notify the applicant of disapproval in written form with an explanation of reasons.

A trademark registrant intending to change the name or address of a mark, the registrant shall concurrently change the name or address of all of its valid trademarks (including the registered marks and the accepted applications that are pending under registration examination); where the trademark registrant fails to concurrently change the name or address all of its valid trademarks, the CNIPA shall issue an amendment notification to the registrant for its amendment within the prescribed time limit; and if the registrant fails to do so within the prescribed time, the change application will be deemed as abandoned, the CNIPA shall notify the applicant in written form.

For international registrations, the registrant must record the name and/or address directly with WIPO.

APPLICABLE SITUATIONS

Following are the most common situations in practice for your reference:

1) Apply for the change of name and/or address;

The application for change should be filed in the applicant’s new name and/or address and copy of the official document showing the name change is required if you apply for the name change.  The CNIPA does not require a document indicating the change of address.

Where the name of the applicant has been changed several times, it is not necessary to change the name one by one, and the name may be changed to the current name through one application, but the applicant shall provide all the documents evidencing the change of the name for several times.

2) Applying for the change of only Chinese name and/or address

There is no actual name or address change, but the applicant would like to apply for the change of the Chinese name and/or address.  A statement issued by the applicant on the change of Chinese name is required and no document is required for the change of address.

Kindly note that, a trademark applicant or a trademark registrant which discovers that there is any evident error in the name and/or address of a mark may apply for correction before the CNIPA, which is different from the application for change of name and/or address change.

LEGAL RISK

If the name and/or address of a trademark’s owner has changed but the owner didn’t timely record the name and/or address change of their previous marks before the CNIPA, they may encounter the issues below:

Ø  The applications with the new name and/or address are rejected by the CNIPA based on the same applicant’s previous same or similar marks with different name and/or address, because the CNIPA considers different names and addresses belong to different entities.

Ø  The local Administration For Market Regulation ("AMR") will ask the registrant to make correction within a prescribed time limit if they find that the trademark registrant changes the name and/or address of the mark during use; and if the registrant fails to do so within the time limit, the CNIPA shall cancel the registered trademark.

Ø  The assignment application of the marks with previous name and/or address may be rejected by the CNIPA, because the name and/or address of the marks are not consistent with that showed on the business license of the applicant;

Ø  The renewal application of the marks with previous name and/or address may be rejected by the CNIPA, because the name and/or address of the marks are not consistent with that showed on the business license of the applicant;

Ø  The mark with previous name and/or address may be cancelled for registration in potential non-use cancellation action, because the use evidence of the mark with new name and/or address may not be accepted by the CNIPA;

Ø  The applicant may be not allowed to set up shops on E-commerce Platforms, because the Platforms will check whether the name and address of the mark is consistent with that on the business license;

Ø  The pledge registration of the mark with previous name and/or address may be not approved, because it's not consistent with that on the business license.

To avoid any potential risk, each company should update the name and/or address of all of their valid marks after their name and/or address changed.

REQUIRED DOCUMENTS

1. Copy of Power of Attorney

One scanned copy will be fine. The CNIPA strictly requires Power of Attorneys to be limited to one page.

2. Copy of the official document showing the name change

For your information, the CNIPA does not require a document indicating the change of address.

3. Copy of business license (also known as “Certificate of Incorporation”); OR

4. Copy of Passport (“Identity Card”)

Estimated Costs

Kindly note that we now offer two options of communication, i.e. traditional email instruction and our Kangxin IP Platform (https://eservice.kangxin.com), which both provide the same substantive services by our trademark attorneys, with the only difference in instruction manners.  Since our platform is more efficient by automatic docketing, standard goods/services recommendation and automatic generation of POA as well as other smart tools, it is treated as a fast track, and we offer more favorable quotation for all services via our platform as compared with our standard fee charges.

If you entrust us the cases through our Kangxin IP Platform, the cost to record the change for one mark in one Class is around USD/EUR 80, no official fee will be incurred.

We also list the cost for the instruction through the traditional email way for your easy reference:

Below you may find the costs for recording the change of name and/or address for one mark in one class via e-filing system(calculated under the current exchange rate, USD/EUR 1 = CNY 6.6).

If there is a large amount of marks that are required to be recorded the name and/or address change, we are very glad to provide a special discount in your cases.

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