Trademark licensing refers to the act of a registered trademark owner legally allowing others to use their registered trademark, typically through the establishment of a licensing contract. The types include ordinary license, exclusive license, and sole license.
Today, let's discuss how to submit a trademark licensing application to the China National Intellectual Property Administration (CNIPA) if you wish to do so.
Firstly, what documents are required for trademark licensing?
1. Trademark License Application Form
2. Power of Attorney signed by the trademark licensor
3. Business license of the trademark licensor
4. Business license of the trademark licensee
It should be noted that when submitting a licensing application to CNIPA, a trademark license contract is no longer required.
In the trademark licensing application form, it is necessary to fill in the company names and addresses of both the licensor and the licensee in detail, as well as the term of trademark licensing use. However, the term of trademark licensing use does not necessarily have to be exactly the same as the term in the trademark licensing contract. If the start date in the trademark licensing contract is earlier than the registration date of the trademark, the start date of the trademark licensing use term should begin on or after the registration date of the trademark. This is because the trademark licensing application record is aimed at trademarks that have been approved for registration. If the trademark has not yet been approved for registration, a trademark licensing record application cannot be submitted.
In addition, if the end date of the trademark licensing use is later than the ten-year validity period of the trademark, a trademark licensing record application must be submitted again after the approval of the renewal application, with the licensing term being from the renewal date to the end date of the trademark license, and it should not exceed the exclusive right term after the trademark renewal. For example, Company A licenses its "CBCB" trademark, with an application date of January 4, 2014, and a term of exclusive rights from May 2, 2015, to May 1, 2025, to Company Z. If the term agreed in the licensing contract is from October 1, 2014, to October 1, 2026, two trademark licensing record applications need to be submitted. The licensing term in the first trademark licensing record application should be: May 2, 2015 (the starting date of the trademark's exclusive right, or a later date) to May 1, 2025 (the expiration date of the trademark's exclusive right). The second trademark licensing record application should be submitted after the renewal of the trademark is approved, with the licensing term being: May 2, 2025 (the starting date of the ten-year validity period after the trademark renewal, or a later date) to October 1, 2026.
If any date does not conform to the registration date or renewal date of the trademark, the CNIPA will issue a notification for amendment. This will increase the cost of the trademark licensing record application.
After the trademark licensing record is completed, can the trademark be transferred? The answer is yes. However, due to the change of the licensor, a new record application must be made.
The licensing record also helps in subsequent trademark protection, such as when submitting evidence of use in a cancellation case. When a trademark has been registered for three years, anyone can submit a request to the CNIPA for the cancellation of a trademark that has not been used for three consecutive years. This requires the trademark registrant to submit evidence of real and effective use within a specified time. At this time, the trademark registrant can submit evidence of the licensee's use of the trademark as evidence of its use of the trademark, and since the licensing record has been recorded with the CNIPA, the trademark registrant does not need to provide additional documents to prove the relationship between the two parties. This can help the trademark registrant save a lot of trouble.
