Trademark assignment is the act of transferring trademark rights between different entities. This transfer of trademark rights is very common. During the process of trademark transfer, the applicant or registrant usually reaches an agreement with the assignee based on relevant laws such as trademark law and contract law to transfer their trademark rights or trademark application rights to the assignee, who inherits the corresponding rights through the transfer. Trademark transfer is based on the genuine mutual consent of both parties, therefore it must adhere to principles of legality, voluntariness, fairness, and good faith. Although trademark transfer may seem simple, it often encounters various obstacles and challenges in practice. Therefore, this article lists some situations that may hinder the transfer process or prevent the transfer from being completed, hoping to help everyone avoid falling into pitfalls during the transfer process.

Amendment Notification of Trademark Assignment

During the trademark assignment process, if the assignment materials do not comply with regulations, such as cases where the same or similar trademarks of the same trademark registrant/applicant are not transferred together, the CNIPA will issue notifications of amendment, requiring the assignor and assignee to supplement or correct the assignment materials, as well as transfer other same or similar trademarks. The purpose of this procedure is to ensure the legality and effectiveness of trademark assignment, safeguarding the rights of both parties.

If any of the following situations occur, the trademark office may notify the assignor/assignee to make corrections.

(1) The name of the assignor in the application does not match the registrant's name in the records of the trademark office, and can be corrected (such as changes in the assignor's name that have not been updated in a timely manner, errors in name filling, etc.);

(2) If the assignor is a natural person or a sole proprietor, and the identity card number of the assignor in the application does not match the identity card number registered in the trademark office;

(3) If the trademark is nearing expiration or entering the renewal grace period, notifying the assignor to timely apply for renewal;

(4) If the trademark being transferred has already undergone pledge registration or has been seized;

(5) If the assignor has not transferred the same or similar trademarks registered on the same or similar goods together;

(6) Other situations where problems or questions are found during examination and require further explanation and provision of supplementary materials by the assignor/assignee.

After receiving the notification of amendment, the assignor/assignee must make the necessary corrections within the specified period as required in the notice. The trademark office will conduct a re-examination of the assignment application based on the corrections made by the assignor/assignee.

It should be noted that for trademarks that require transfer together, the following points should be noted:

(1) For Madrid international registrations protected in China, if the trademarks to be transferred domestically are the same or similar to those under the assignor's name, the transfer should be done together.

(2) The assignor can also eliminate transfer obstacles by handling revocation (partial revocations), withdrawals of trademark registration applications, or reducing goods.

If, during the assignment examination process, the assignor does not transfer the same or similar trademarks registered on the same or similar goods together, and after the correction notice, fails to make the required corrections, the assignment application will be deemed abandoned.

The trademark registration department may refuse to approve the assignment if any of the following situations occurs:

(1) The assignor is not the trademark registrant (such as errors in the registration number in the assignment application, resulting in the assignor not corresponding to the trademark registrant, or the trademark has already been transferred to another person);

(2) An assignment application with the same content has already been processed, and another assignment is not necessary;

(3) The trademark is invalid;

(4) The trademark has been sealed by a court, has undergone pledge registration, and written consent has not been obtained from the court or the pledgee;

(5) In cases of assignment applications, if the documents provided by the assignee cannot prove their right to inherit the trademark rights;

(6) Transfer that may cause confusion or other adverse effects;

(7) Other situations where transfer should not be approved.

Article 42.3 of the Trademark Law explicitly states that the trademark registration department will not approve transfers that may cause confusion or have other adverse effects. The confusion or adverse effects mentioned here refer to those caused by the transfer itself, rather than the confusion or adverse effects carried by the trademark itself. It mainly includes the following situations:

(1) If there is a transfer of collective trademarks or certification trademarks, and the assignee does not meet the qualifications and requirements stipulated in the "Measures for the Registration and Administration of Collective Trademarks and Certification Trademarks".

(2) If a trademark containing a geographical name is transferred to someone outside that region, and if the goods using that trademark are closely related to the geographical name included in the trademark, it may cause the public to mistakenly believe the origin of the goods, leading to confusion among the relevant public or general consumers.

(3) If a trademark contains the full name, part of the name, or abbreviation of a company, but is transferred to another company, it may cause confusion among the relevant public or general consumers.

(4) If the trademark itself carries a special meaning that may have a negative impact on China's political, economic, cultural, religious, ethnic, and other social public interests, public order, or good customs.

(5) If the agency violates Article 87 of the Implementation Regulations of the Trademark Law as the assignee.

(6) If the registrant has applied for a large number of trademarks and transferred many trademarks, the assignee is dispersed, and without valid reasons cannot provide relevant evidence of trademark use or explain the intent of use, or the evidence is invalid.

(7) Other situations that may cause confusion or other adverse effects.

The assignment procedure is a disposal procedure for trademark rights, which not only affects the rights of the assignee but may also affect the interests of other related parties, including especially exclusive and exclusive licensees, potential assignees who have previously applied for assignment but have not been approved, the other party in the assignment application, and disputing parties over trademark ownership. The seemingly simple trademark transfer process involves many entities and varies in complexity, so both the assignor and assignee should carefully prepare the assignment application after fully understanding the assignment situation and clarifying the required documents, completing the trademark assignment registration on the basis of "saving time, effort, and money".