CBL’s Introduction

These procedures translated by CBL into American English provide insight into the procedures used in China to govern trademark license filings. These procedures will be valuable to businesses, because of the significant misinformation published about what must be filed when registering a license with the China Trademark Office. Therefore, familiarity with the recordation process will enable you meet the requirements for recording trademark license contracts in China.

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Trademark License Contract Recordation Procedures

(Trademark Office of SAIC, TM [1997] No. 39, August 1, 1997)

Section 1 These Procedures are issued under the PRC Trademark Act and its Administrative Regulations for the administration of trademark license contracts and trademark licenses.

Section 2 Trademark registrants must enter into a trademark license contract to authorize use of their mark.

Section 3 The trademark license contract must be executed in good faith and voluntarily.

No individual or entity may use trademark license contracts for unlawful purposes or to harm the public or consumer interest.

Section 4 Trademark licensors must record a copy of the license contract at the Trademark Office within three months of execution.

Section 5 Domestic licensors may record the contract directly at the Trademark Office or through a trademark service authorized by SAIC, whereas a foreign licensor must hire an authorized trademark service.

Section 6 A trademark license contract must include:

(a) The licensed trademark and its registration number;

(b) Scope of goods licensed;

(c) License term;

(d) Delivery of trademark labels for the licensed trademark;

(e) Licensor’s quality monitoring for licensee’s products.

(f) Provisions on marking the licensee’s name and goods’ origin on the goods.

Section 7 Recording a trademark license contract requires:

(a) Trademark License Contract Recordation Form;

(b) A copy of the trademark license contract;

(c) A copy of the trademark’s registration certificate.

Additionally, valid certification from public health regulatory agencies is required for licensors to record license contracts for human pharmaceuticals.

A valid production permit from the tobacco regulatory agency is required to record license contracts for cigar, cigarette, and prepackaged cut tobacco.

Translation to Chinese is required for materials in other languages.

Section 8 Trademark registrants may include specific clauses in the license contract or provide an authorization letter that permits trademark sublicensing.

Section 9 The materials required for the recordation of a license contract depend on the number of trademarks licensed stated in the filing form, and a copy of the license contract and Trademark Registration Certificate must be attached.

The licensor must submit a recordation form and a Trademark Registration Form copy for each license, but only one copy of the license contract is needed when multiple trademarks are licensed through a single contract.

Section 10 Licensors must pay a recordation fee determined by the number of trademarks licensed, either directly to the Trademark Office or through payment on their behalf by an authorized trademark service, and specific fee rates shall be subject to relevant requirements.

Section 11 The Trademark Office shall reject the recordation if:

(a) The licensor is not the registered owner of the licensed trademark.

(b) The licensed mark is not identical to the licensor’s registered mark.

(c) The trademark registration certificate number in the contract is incorrect;

(d) The license term exceeds the effective term of the trademark registration;

(e) The licensed goods do not fall within the scope of goods protected under the trademark;

(f) The license contract does not comply with §6 of these Procedures;

(g) The licensor fails to provide the materials provided in §7 of these rules;

(h) The licensor fails to pay the recordation fees;

(i) The licensor fails to provide Chinese translations for materials in other languages;

(j) The recordation is ineligible for other reasons.

Section 12 The Trademark Office shall grant the recordation if all required materials are submitted in compliance with the Trademark Act and its Administrative Regulations, notify the recordation applicant, and publish the recordation on the second issue of the Trademark Gazette each month.

Section 13 The Trademark Office shall return the materials for any nonconforming applications with an explanation.

The licensor must make the required corrections and reapply within one month of receiving the returned materials.

Section 14 Trademark licensors must reapply for recordation to amend any previous recordation in the event of:

(a) Changes to the scope of the licensed goods;

(b) Changes to the license term;

(c) Transfer of trademark ownership;

(d) Other appropriate circumstances.

Section 15 Licensors and licensees must inform the Trademark Office and county market regulator office in writing in the case of:

(a) Changes to the licensor’s name;

(b) Changes to the licensee’s name;

(c) Early termination of the trademark license contract;

(d) Other necessary circumstances.

Section 16 The Trademark Office shall cancel the recordation obtained through misrepresentation or other unethical methods and give public notice of such cancellation.

Section 17 Upon payment of the required fees, any individual or entity may submit a written request to search for a recorded trademark license contract.

Section 18 The Administrative Regulations §35 requires licensors and licensees to submit a copy of the trademark license contract at their local market regulatory agencies within three months of execution for filing, to be completed pursuant to these Procedures.

Section 19 County or higher market regulator offices are responsible for regulatory oversight of the use of trademark licenses under the Trademark Act and other applicable law.

Section 20 County or higher market regulator offices are also responsible for investigating illegal trademark license usage under the Trademark Act and other applicable laws, and shall prosecute any crimes.

Section 21 “Trademark licensors” means one who authorizes others to use their registered trademarks through license contracts; “trademark licensees” are those authorized to use these trademarks under the Trademark Act and the Administrative Regulations.

These Procedures apply to both goods and services.

Section 22 The Trademark Office is responsible for drafting and issuing model trademark license contracts.

Section 23 These Procedures take effect on the date of issuance, and the previous Trademark License Contract Recordation Guidelines shall be repealed on the same date.

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While these rules are authoritative, they don’t tell the whole story about how the bureaucracy in China exercises its administrative discretion in practice. See CBL’s translation How to Record Trademark Licenses to learn about how trademark license recordation works in China from a practical perspective.

This article was translated to American English using the User Centered Translation approach from the following government publication:

国家工商行政管理局商标局: “商标使用许可合同备案办法

https://wipolex-res.wipo.int/edocs/lexdocs/laws/zh/cn/cn274zh.pdf