We often see the situation that the company neglects to update the name and address before the National Intellectual Property Administration, PRC (“CNIPA”) for their trademarks when the company details change. This is not just a simple administrative formality, but a critical legal obligation that protects your business's valuable assets. This article will provide an overview and guideline for this issue.

Legal Foundations

Article 41 of the China Trademark Law stipulates "Where, after the registration of a trademark, the name, address, or other matters pertaining to the registrant change, an application regarding the change shall be filed."

Article 49 of the China Trademark Law stipulates "Where a trademark registrant alters a registered trademark without approval, the name, address, or other matters concerning the registrant without approval, the Trademark Office shall order it to rectify the situation by a specified time; If they still fail to rectify during the specified time period, the Trademark Office shall cancel the registered trademark."

The Trademark Examination and Trial Guidelines stipulates that "Changing the name of the trademark registrant refers to the situation where, after a change in the name (individual or company name) of the trademark owner, no application for change has been duly submitted to the trademark registration authority, or where the name of the actual user of the registered trademark is consistent with the registrant's name recorded in the Trademark Register." and "The aforementioned behavior, after being ordered by the local market supervision authority for the trademark registrant to make corrections but failing to do so within the stipulated time, will be subject to cancellation according to the law."

Summary

Above laws and regulations emphasize a fundamental rule: consistency of the name and address between the registered trademark and its actual used name and address is mandatory.  We strongly recommend the registrant to update their name and address of the trademarks once such information has been changed before the company registry to avoid possible risks.

The risks of not updating the name and address

1.      Losing the trademark rights

For domestic companies, the CNIPA sends all official notifications including non-use cancellation actions, invalidation petitions, or opposition actions to the name and address recorded under the trademark. If your company has changed its name and address, these documents will not reach you. You will miss the deadlines to respond to such actions, resulting in the automatic cancellation or invalidation of your trademarks.

2. Procedure delay or rejection

If you want to license, sell, or renew trademarks, the CNIPA will verify the name and address.  A name discrepancy results in rejection or amendment of such actions and you need to complete the change procedure first, potentially causing procedure delays and rejection.  If you submit new applications using a new name and address that are identical or similar to your previously registered trademark with old name or address, there is a high risk that the CNIPA may reject your new trademark application by citing your old trademarks. This is because the CNIPA considers the trademarks registered under different name or address as belonging to separate entities and under such situation, you need to spend more money to file the review of refusal and record the changes of the name or address of your all trademarks with old name or address.

3. Risk of defending your rights before the Court

Courts require the plaintiff to be the legal owner of the trademark, thus, a discrepancy between your current company name and the name recorded under the trademark will complicate the process.  You may need to provide additional documents of the name change, resulting in the delay or rejection of your case before the Court.

4. Failure of market access

Online platforms, shopping malls, etc. require trademark certificates to launch the business. A discrepancy between the trademark owner name and your current business license will result in the failure of verification.

Conclusion

Updating the name and address for trademarks is a relatively straightforward and low-cost process yet it is of great importance to the company. Timely updates are crucial not only for avoiding potential pitfalls but also for safeguarding your brand and future rights.  Therefore, we highly recommend updating the name and address for trademarks once your company' information has been changed.