Procedures of Filing Record of Trademark Licensing Contract




Procedures of Filing Record of Trademark Licensing Contract

(Promulgated by the Trademark Office of the State Administration for Industry and Commerce on and effective as of, August1, 1997.)
 
Article 1 Aims of Legislation
 
These Procedures are formulated in accordance with the relevant provisions of the PRC, Trademark Law and the PRC, Trademark Law Implementing Rules, in order to strengthen the administration of trademark licensing contracts and to standardize the acts of trademark licensing.
 
Article 2 Compulsion of Signature of License Contract
 
A trademark registrant shall sign a trademark licensing contract if it wishes to license its registered trademark to another.
 
Article 3 Principles of Concluding of License Contract
 
When concluding a trademark licensing contract, the principles of free will and good faith shall be observed.
 
No unit or individual may use a licensing contract to engage in illegal activities and harm the public interest or the rights and interests of the consumers.
 
Article 4 Term Limited of Filing Record of License Contract
 
Within three months following the execution of a trademark licensing contract the licensor shall file a duplicate of the licensing contract with the Trademark Office for the record.
 
Article 5 Means of Filing Record of License Contract
 
The filing for the record of a trademark licensing contract with the Trademark Office may be entrusted to a trademark agency approved by the State Administration for Industry and Commerce or be carried out directly with the Trademark Office.
 
If the licensor is a foreigner or a foreign enterprise, he or it shall appoint a trademark agency designated by the State Administration for Industry and Commerce.
 
Article 6 Necessary Terms of License Contract
 
A trademark licensing contract shall at least contain the following particulars:
1. the licensed trademark and the number of its registration certificate;
2. the scope of licensed goods;
3. the licence term;
4. the way in which representations of the trademark licensed shall be provided;
 
5. provisions for supervision by the licensor of the quality of the licensee's goods for which the registered trademark is used; and
6. provisions requiring the licensee to indicate its name and the place of origin on the goods for which the registered trademark of the licensor is used.
 
Article 7 Submission of Filing Documents of License Contract
 
When applying for filing record of a trademark licensing contract, the following documents shall be provided:
 
1. the filing record form for the trademark licensing contract;
2. a duplicate of the trademark licensing contract; and
3. a photocopy of the registration certificate of the trademark licensed.
 
A valid certificate obtained by the licensee from the administrative department for public health shall also be filed in case the trademark licensing contract that is placed on record involves pharmaceuticals for human use.
 
A valid certificate approving production obtained by the licensee from the State department in charge of tobacco shall also be filed in case the trademark licensing contract that is placed on record involves cigarettes, cigars or packaged cut tobacco.
 
Documents in a foreign language shall be accompanied by a Chinese translation.
 
Article 8 Qualifications of Transfer License to Third Party
 
In case a trademark registrant licenses its registered trademark to a third party through a licensee, then the trademark licensing contract shall contain a clause permitting the licensee to license the trademark to a third party, or the licensor shall issue a letter of authorization to that effect.
 
Article 9 Filing Record of Muti-License Contracts
 
When applying for filing record of a trademark licensing contract, one trademark licensing contract filing record form shall be completed for every trademark licensed and be accompanied by a duplicate of the trademark licensing contract in question and a photocopy of the Trademark Registration Certificate.
 
In case a number of trademarks are licensed to one licensee under one contract, the licensor shall file the same number of trademark licensing contract filing record forms and Trademark Registration Certificate photocopies, but need file only one duplicate of the licensing contract.
 
Article 10 Payment of Filing Record of License Contract
 
When applying for filing record of a trademark licensing contract, the licensor shall pay a filing record fee according to the number of trademarks licensed.
 
The filing record fee may be paid directly to the Trademark Office or by an appointed trademark agency. The specific fee standards shall be determined according to the regulations on charges for relevant trademark business.
 
Article 11 Circumstances of Non-Filing Record
 
The Trademark Office shall not grant filing record under any of the following circumstances:
 
1. the licensor is not the registrant of the licensed trademark;
2. the licensed trademark is different from the registered trademark;
3. the registration certificate number of the licensed trademark does not agree with the provided trademark registration certificate number;
4. the license term exceeds the term of validity of the registered trademark;
5. the goods for which the registered trademark is licensed exceed the scope of goods for which use of the trademark has been approved;
6. the trademark licensing contract lacks the particulars mentioned in Article 6 hereof;
7. the application for filing record does not contain all documents required in Article 7 hereof;
8. the trademark licensing contract filing record fee has not been paid in full;
9. the foreign language documents in the application for filing record are not accompanied by a Chinese translation; or
10. other circumstances under which filing record shall not be granted.
 
Article 12 Approve and Announcement
 
The Trademark Office shall grant filing record of a trademark licensing contract when all the documents to be filed therefor have been filed and comply with the relevant provisions of the Trademark Law and the Trademark Law Implementing Rules.
 
After a trademark licensing contract has been recorded, the Trademark Office shall send a filing record notice to the filing record applicant. In addition, it shall publish all filing records in the second volume of the month of the Trademark Gazette.
 
Article 13 Return and Complement of Application of Filing Record
 
Applications that do not comply with the filing record requirements shall be returned by the Trademark Office together with an explanation of the reason.
 
Within one month upon receipt of the returned filing record materials, the licensor shall make additions and corrections according to the Trademark Office's directions and resubmit the materials for filing record purposes.
 
Article 14 Circumstances of Reapply of Filing Record
 
A new application for filing record of a trademark licensing contract shall be made under any of the following circumstances:
1. the scope of goods for which the trademark is licensed has changed;
2. the license term has changed;
3. ownership of the licensed trademark has been transferred; or
4. any other circumstances requiring the making of a new application for filing record.
 
Article 15 Circumstances of Reporting to Marks Administration
 
The licensor and the licensee shall notify in writing the Trademark Office and the authorities for the administration of industry and commerce at county level in their respective locations under any of the following circumstances:
 
1. a change in the name of the licensor has occurred;
2. a change in the name of the licensee has occurred;
3. the trademark licensing contract has been terminated early; or
4. any other circumstances that need to be reported
 
Article 16 Cancellation of Filing Record of License Contract
 
If filing record was obtained through fraud or other irregular means, the Trademark Office shall cancel the filing record of the trademark licensing contract and publicly announce the same.
 
Article 17 Enquire of Filing Record of License Contract
 
After a trademark licensing contract has been filed for the record, any unit or person may apply in writing for information, in which case an inquiry fee shall be paid according to the relevant regulations.
 
Article 18 Copies of License Contract Ready for Check
 
In accordance with Article 35 of the Trademark Law Implementing Rules , the licensor and the licensee shall file, within three months from the date of execution of the trademark licensing contract, a duplicate of the said contract with the authorities for the administration of industry and commerce of the places where they are located to be kept for reference. As to the specific methods for keeping such duplicates for reference, reference may be made to these Procedures.
 
Article 19 Supervise Responsibility of Administration Authority
 
The authorities for the administration of industry and commerce at county level and above shall be responsible for guidance, supervision and control of trademark licensing, in accordance with the Trademark Law and other laws, rules and regulations.
 
Article 20 Check and liability of Illegal Activities on Use of Marks License
 
The use of the trademark licensing contract to engage in illegal activities shall be dealt with by the authorities for the administration of industry and commerce at county level and above in accordance with the Trademark Law and other laws, rules and regulations. If such use constitutes a criminal offence, criminal liability shall be pursued according to law.
 
Article 21 Explanation of Licensor and Licensee
 
For the purposes of these Procedures, the term "trademark licensor" shall mean the person in a trademark licensing contract that licenses its registered trademark to another person; and the term "trademark licensee" shall mean a person that complies with the relevant provisions of the Trademark Law and the Trademark Law Implementing Rules and that has been authorized by a trademark registrant to use its trademark.
 
The provisions of these Procedures that relate to trademarks for goods are applicable to trademarks for services.
 
Article 22 Constitution and Promulgation of Modal Version of License Contract
 
The Trademark Office shall formulate and publish accordingly.
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