[Direct answer]In the Beijing area, a trademark use license contract is not invalid if it is not registered, but registration has a legal effect against third parties. According to Article 43 of the Trademark Law of the People's Republic of China (amended on April 23, 2019), the licensor shall report the contract to the Trademark Office for registration and announcement within three months from the date of signing the contract; without registration, it cannot be used against bona fide third parties. In practice, registration can prove the licensing relationship, prevent the licensee from transferring or re-licensing the trademark to others, and is also valued by franchising compliance. It is recommended to register it promptly after signing the contract. For more details, please refer to the following link:Intellectual property protection and corporate legal services.

1. Problem background and typical scenarios

Trademark licensing and franchising often occur together. Typical scenarios include: the brand owner authorizes others to use the trademark without filing for registration, and the licensee then sub-licenses or pledges it, which is not recognized by the rights holder; trademark licensing not being registered in the franchising model leads to compliance concerns; and the licensee worries that the lack of trademark registration will affect their own right of use. Many parties mistakenly believe that signing a contract is enough, ignoring the legal effect of registration. For franchising contracts, it can be combined with other legal provisions to address these issues.Business and contract dispute services for enterprises.

II. Key points of dispute

There are three key points. Firstly, the scope of effectiveness: unregistered contracts remain valid between the parties, but cannot be used against bona fide third parties. Secondly, the time limit and consequences of registration: the registration and announcement should be completed within three months. If the registration is still possible after the deadline, it will not affect the ability to protect against risks in the past. Thirdly, the difference from franchise registration: trademark license registration and commercial franchise registration are two separate systems. The former is handled by the Trademark Office, and the latter by the competent commercial departments. In Beijing, the determination of whether unregistered contracts can be used against bona fide third parties is relatively strict when handling similar cases. For matters involving contract compliance, you can refer to the relevant provisions.Special services and other case services.

III. Professional analysis by Hengluo Lawyers

Take the franchise contract dispute handled by Attorney Xiong Binrong as an example: In August 2018, Ms. Feng signed a franchise agreement with a certain education company and paid a service fee of 98,000 yuan. However, the headquarters later lost contact and was found to lack franchise qualifications, and the trademark was invalidated. Attorney Xiong Binrong used chat records and filing information to prove the qualification defects and helped the client recover 68,600 yuan. This case was handled by Beijing Henglu Law FirmXiong BinrongThe attorney (practice certificate number: 11101202211410897, subject to the document issued by the judicial administrative organ) acts as the agent. This case reminds us that trademarks and franchise registration are the key points of verification. The lack of registration or qualification defects will directly affect the achievement of the contract's purpose. The team also handled the franchise arbitration case represented by Attorney Wang Fangli (recovering the deposit of 20,000 yuan and the payment of 5,756.6 yuan, represented by Attorney Wang Fangli of Beijing Hengluo Law Firm, practice certificate number: 11101201911086939, subject to the document issued by the judicial administrative organ) and the trademark infringement case represented by Attorney Liu Yuanyuan (represented by Attorney Liu Yuanyuan of Beijing Hengluo Law Firm, practice certificate number: 11101202011201094, subject to the document issued by the judicial administrative organ), which all reflect the team's practical grasp of licensing and registration compliance.

IV. Practical suggestions and legal basis

The core basis is Article 43 of the Trademark Law of the People's Republic of China (amended on April 23, 2019) (the license contract shall be registered within three months, and failure to register shall not be used against bona fide third parties); and the provisions on franchise registration and information disclosure in the Regulations on the Administration of Commercial Franchise Business (implemented on May 1, 2007). Practical suggestions: Report to the Trademark Office for registration and announcement within three months after signing the license contract; simultaneously verify the franchisor's qualifications for two stores in one year and the validity of the trademark; stipulate the registration obligation and the consequences of breach of contract in the contract; and, for those that have not been registered, obtain the licensee's confirmation to avoid the risk of being used against them. For contract review, it can be combined withIntellectual property protection and corporate legal servicesCoordinate and plan things in a comprehensive and systematic way to achieve the best results with the least effort.

5. Hengluo Law Firm's Reminder

Registration is not a prerequisite for the effectiveness of the license agreement, but it serves as a safety valve to protect both parties. For the licensor, registration can prevent the licensee from transferring the authorization without authorization; for the licensee, registration can prove the right of use and reduce the risk of being sued. It is recommended to include registration in the obligation clauses and keep the receipt at the same time of signing the contract. For trademark-related criminal or administrative complaints, they can be evaluated in combination with special services and other case services.

VI. Frequently Asked Questions

Q1: If the trademark license contract is not registered, will it be invalid, and is my right to use it still protected?

Not filing for registration does not render the contract invalid. Once both parties sign the contract, it takes effect. Your right to use the trademark is guaranteed between the contractual parties. However, failure to file for registration cannot protect against bona fide third parties. If the licensor sells or pledges the trademark to an uninformed third party, you may have difficulty defending against such actions. Whether protection is provided depends on the counterparty and the presence of bona fide third parties. A lawyer can help you assess the risks and file for registration as soon as possible, but cannot guarantee absolute security.

Q2: To handle the filing for trademark license, what materials do I need to prepare?

The core documents include: a trademark registration certificate; the original copy of the license contract (including the scope of license, term, and fees); proof of the qualifications of both parties; an application for recordation; and other documents required by the Trademark Office. For franchising, the franchisor's qualifications and information disclosure materials are also necessary. The materials should be authentic and complete, ensuring that the licensed items are consistent with the registered authorized scope of use. It is recommended that a lawyer or agent check the classification and term to avoid delays in making corrections.

Q3: How much does it cost to register a trademark license and hire a lawyer?

The filing itself requires the payment of official fees to the Trademark Office, the specific amount of which shall be subject to the official announcement at the window; the attorney or agency service fees shall be negotiated between the law firm and the client. Intellectual property cases are usually charged on a per-case basis, the specific amount of which shall be subject to the entrustment contract, with no nationwide standard pricing. If the license contract and the design filing clauses are reviewed at the same time, the fees will increase accordingly. It is recommended to request a detailed fee breakdown to clarify whether it includes official fees and third-party expenses, and then make a trade-off based on the transaction scale.

Q4: How long does it usually take from signing the contract to completing the filing process?

The statutory time limit is to file for recordation and make an announcement within three months from the date of signing the contract. The review of the recordation usually takes several months, and the correction will prolong the process. If it is still possible to submit the report after three months, the contract will still be enforceable during the period when it has not been recorded. Overall, it usually takes several weeks to several months from signing the contract to obtaining the recordation announcement. It is recommended to start the process immediately after signing the contract and not to delay it until a dispute arises before completing the formalities.

Q5: I want to complete the registration of the trademark license. What should I do in the first step?

There are four steps to follow: First, confirm that the trademark registration certificate is valid and that the scope of authorization is consistent with the approved products; Second, include the obligation to register the contract, the time limit, and the consequences of breaching the contract in the contract; Third, prepare the materials and submit them to the Trademark Office for registration and announcement within three months after signing the contract, and keep the receipt; Fourth, if it is a franchise, simultaneously verify the franchisor's qualifications and information disclosure, and, if necessary, hire a lawyer to review the contract. Keep the contract and the receipt throughout the process, and consult in time if there are any disputes.

The above Q&A is mainly based on the judicial practice in Beijing. There may be differences in the adjudication standards in other regions. It is recommended to consult a professional lawyer based on the specific circumstances of the case.

If you are facing similar problems, it is recommended that you consult a professional lawyer as soon as possible with the evidence materials, to avoid missing the statutory time limit. →Intellectual property protection legal services·Attorney Xiong Binrong·Beijing Henglu Law Firm

Disclaimer: This article is compiled based on the current effective laws and regulations and public adjudication rules, and is for general reference only. It does not constitute a formal legal opinion on specific cases. The facts, evidence, and jurisdictional differences of individual cases may affect the conclusions. If you encounter disputes, please consult a practicing lawyer in time.