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For trademarks used on sectors where a prior authorization of conducting business is required (pharmaceuticals, tobacco, etc.), the licensee must have obtained a prior approval from the relevant authorities to engage in the respective industry or produce said goods.

Trademark licenses should be filed for recordation with the Chinese Intellectual Property Administration (CNIPA). Applications for trademark licensing recordation that comply with relevant regulations will be published by the CNIPA on the trademark gazette.

The validity of a trademark licensing contract, signed by qualified parties based on genuine intent, is not affected by the recordation of the trademark license. However, an unrecorded trademark license cannot be enforced against good-faith third parties.

Recording licenses is only available for registered, valid trademarks.

• License recordation is not available for trademark applications
• If applying for recordation on trademarks frozen by a people’s court, a written document from the court consenting to the license must be submitted.
• For trademarks with prior pledge registrations, a written document from the pledgee consenting to the license is required.
• Applications for trademarks that have exceeded their validity period or have lapsed should not be submitted.

 

 

1. Requirements for a License Agreement

The license agreement should specify the following matters:

1. Owner of the trademark rights

For co-owned trademarks, the application should be submitted in the name of the representative, with consent from all co-owners. All co-owners must sign or stamp the application (including the first page and any appendices) or power of attorney, and submit copies of identification documents.

2. Basic Trademark Information

The parties should explicitly stipulate the registration number, trademark specimen, and other basic information of the trademark being licensed. If multiple trademarks are licensed within the same contract, relevant information for each trademark should be listed.

3. Goods or Services Information

The parties should clearly define the specific categories and items of goods or services for which the trademark is licensed. The licensed goods or services must not exceed the scope approved for the registered trademark, and their names should be the same.

4. Form of Licensing

The parties should specify the specific methods of trademark use, geographical scope, and other related information.

5. License Duration

The parties should specify the duration of the license, which should not start before the trademark is approved for registration and should not exceed the validity period of the registered trademark. It should also not conflict with the duration of the licensor and licensee.

6. Type and Limitations of License

The parties should clearly define the type of trademark licensing and explicitly stipulate the actions and restrictions applicable to the licensor and licensee based on the characteristics of ordinary, exclusive, and sole licenses.

7. Quality Assurance

According to relevant trademark laws, the licensor must supervise the quality of the goods bearing the licensed trademark. The licensee must ensure the quality of the goods using the registered trademark. If using another’s registered trademark, the licensee must indicate their name and the origin of the goods on the products. The parties can further specify rights and obligations related to quality assurance.

8. Liability for Breach and Other Matters

The parties can explicitly define the liabilities for breaches of contract, handling methods, and other necessary content.

 

1. Material Requirements

To submit a trademark licensing recordation application, the following materials must be provided: the trademark licensing agreement recordation form, copies of identification documents for the trademark registrant and licensee, and a power of attorney from the licensor(s).

Additionally, for special trademarks (e.g., those used on pharmaceuticals, tobacco, etc.), the licensing recordation application must include valid proof that the licensee has obtained approval from relevant authorities to engage in the respective industry or produce related goods.

• Life of the Trademark License

1. Change of Names of Licensor and Licensee

After recordation, if either party changes their name during the license period, they can submit the relevant name change documentation to the licensor to apply for a change in the recordation.

To apply for a name change, the following documents must be submitted: the name change recordation form, a copy of the licensor’s identification documents, and the name change certification issued by the relevant registration authority. If the licensee’s name changes, a copy of their updated identification documents must also be submitted. If a representative agency is involved, a power of attorney signed or stamped by the licensor must be included.

2. Withdrawal of Trademark Licensing Recordation

The applicant can request in writing to withdraw the trademark licensing recordation application according to relevant requirements. For applications that have not yet been approved, if the reasons for withdrawal are found to be reasonable upon review, the application will be withdrawn, and the review process will be terminated.

3. Early Termination of Trademark Licensing Recordation

During the validity period of the trademark license, if both parties decide to terminate the license early, the licensor may submit a request for early termination and provide relevant materials.

4. Changes in Trademark License Matters

After the approval of the trademark licensing recordation, if there are substantial changes involving the licensed trademark, the licensed goods or services, the parties involved in the license, the duration of use, or the scope of use, a new application for trademark licensing recordation should be submitted, and the previous licensing recordation should be properly addressed in a timely manner.