Many people thought that there is no more step after getting the certificate of registration for trademark. However, this is not true. There are still some issues to work on for the sake of protection of trademark. BKIP has some advice for you.
Note: if corporates do not pay sufficient attention on the situations below in the course of using trademarks, it may affect their exclusive rights to use registered trademarks.
Failure to make timely renewal
To put it in simple language, trademark renewal is an application to continue using the trademark. Registered trademarks have a duration of 10 years (from the date of approval of registration). Applicants must complete the renewal procedure 12 months before the expiry date. If the trademark is not renewed before expiry date, there is nothing to worry about for the law provides for a 6 months of grace period (6 months from the expiry date). If the trademark is not renewed during the grace period, the Trademark Office of National Intellectual Property Administration will cancel the registration of the trademark. Thus, the corporate will lose all rights over that cancelled trademark. Of course, there is no limitation on the number of times of renewal, or else there will not be century-old brands.
Corporates no longer own the exclusive rights to use trademark if they do not complete the procedure of renewal within the stipulated duration.
Failure to make timely amendment
If there are changes of the particulars of trademark applicant, and the procedure for amendment was not completed within the stipulated duration by the Office, the Office will order the applicant to amend the information within a period of time. If the information is still not amended, the Office will cancel the registration of the trademark.
Trademark Law of PRC provides for clear instructions regarding the situations where the applicants should make amendment to the Office.
1，The applicant of trademark changes his name, address or other information;
2，There is a transfer of exclusive rights to use trademark due to enterprise amalgamation, merger annexation or reformation.
Special note: applicant has to file a new application of trademark registration if there is an amendment in the words or symbols of the trademark.
Apart from the situations above, trademark applicants should pay attention to the following aspects in the course of using trademarks.
- Authorisation and record
Before authorizing any other persons to use the trademark, applicants should go through the process of authorization and filing record.
The appropriate procedure of trademark authorization:
- Sign a trademark licensing contract with the licensee;
- Licensee files record to the Office within the limited term;
- The office makes a public announcement.
- Trademark assignment
Any assignment of trademark to other persons must be approved by the Office. Any unapproved assignment is invalid.
- Assigner and assignee sign an assignment agreement；
- Jointly apply to the Office；
- The Office issues proof to the assignee and publicly announces it after approving the application of trademark assignment.
Trademark registrant shall assign all identical or similar trademarks registered on same or similar products. The name and address of the registrant should be accurately printed on the certificate of registration for trademark. If there is any inconsistency, the registrant must make amendments to the trademark before assigning it. Or else, the Office may reject the application of assignment. This practice aims to protect the rights and benefits of the trademark buyers and to avoid problems after purchase.
Shenzhen Benny Kong Intellectual Property Agent Ltd has expertise in domestic and foreign trademark registration, transfer of trademark and enquiry in trademark cases. We are specialized in the trademark practice area and will endeavour to provide professional service to corporates.