[Direct answer]In the Beijing area, trademark transfers must meet statutory conditions before they can be approved. According to Article 42 of the Trademark Law of the People's Republic of China (amended on April 23, 2019 and implemented on November 1, 2019), when transferring a registered trademark, the transferor and the transferee shall jointly submit an application to the Trademark Office; the trademark registrant shall transfer all similar trademarks registered by him for the same kind of goods, or identical or similar trademarks registered for similar goods; if it is likely to cause confusion or have other adverse effects, the Trademark Office shall not approve it. The transferee shall ensure the quality of the goods using the registered trademark. It is recommended to check the rights status and similarity risks before the transfer, and if necessary, seek the assistance of a professional lawyer to conduct due diligence. For more details, please refer to the Trademark Law of the People's Republic of China.Intellectual property protection and corporate legal services.

1. Problem background and typical scenarios

Trademark transfer is a common practice for enterprises to integrate brand assets and realize the transfer of goodwill. Typical scenarios include: transferring trademarks as a whole when a company is acquired or a business line is sold; entrepreneurs acquiring ready-made trademarks from others to quickly launch their businesses; adjusting the ownership of trademarks among related parties; and transferring all trademarks due to neglecting similar trademarks, resulting in approval being rejected or leaving the risk of infringement. Many transferees only focus on the main trademark and fail to check for similar trademarks in the same family or encumbrances such as licenses and pledges. They only realize after the transfer that the rights are incomplete. Such ownership arrangements can be combined withBusiness and contract dispute resolution services for enterprisesCoordinated design.

II. Key points of dispute

There are three key points of contention. Firstly, the obligation of transferring all rights: similar trademarks on the same product, or identical or similar trademarks on similar products must be transferred as a package. Any omissions will result in a request for correction or disapproval. Secondly, confusion and adverse effects: the transfer may lead to public misunderstanding of the product's origin, or violate public order and good customs, in which case the competent authority may disapprove it. Thirdly, clearing rights encumbrances: whether the trademark involves exclusive licenses, pledges, or being sealed up directly affects the enforceability of the transfer. For enterprise asset transactions, reference can be made to the relevant provisions.Attorney Xiong BinrongThe team's experience in corporate legal services helps to identify contractual and ownership risks in advance.

III. Professional analysis by Hengluo Lawyers

Taking a trademark infringement and unfair competition case handled by Attorney Liu Yuanyuan of our firm as an example, we can see the importance of clarifying the source of rights and avoiding free-riding on goodwill in trademark practice. The plaintiff, Company A, is a well-known trademark EFGH in the sanitary napkin field of Category 5; the defendant, Company B, was authorized by a third party to use the EFGK trademark and design patent in September 2023 to produce and sell similar products. In April 2024, Company A sued for compensation of 980,000 yuan, alleging imitation of the well-known trademark and confusion of packaging and decoration. Company B entrusted Beijing Henglu Law Firm to handle the case.Liu YuanyuanThe lawyer (practice license number: 11101202011201094, subject to the document issued by the judicial administrative organ) acted as an agent and raised defenses such as the mark having legal authorization, not being similar to the well-known trademark, and the packaging and decoration having a patent basis. The court partially accepted the defenses: it determined that there was trademark infringement but rejected unfair competition, and awarded compensation of 60,000 yuan for economic losses and reasonable expenses, which was 920,000 yuan lower than the original claim of 980,000 yuan. This case reminds us that when transferring trademarks, it is necessary to review the rights defects and similarity risks in advance to avoid getting involved in similar infringement disputes after the transfer.

IV. Practical suggestions and legal basis

The legal basis is Article 42 (Transfer of Joint Applications, Concurrent Transfer, and Approval of Restrictions) of the Trademark Law of the People's Republic of China (amended on April 23, 2019 and implemented on November 1, 2019); and Articles 31 and 32 of the Implementing Regulations of the Trademark Law of the People's Republic of China (amended on April 29, 2014 and implemented on May 1, 2014) regarding the procedures for transfer applications and approvals. Practical suggestions: Search for similar trademarks in the same family and handle them in a package before transfer; verify encumbrances such as licenses, pledges, and freezes; sign a written transfer contract to clarify the consideration, delivery, and breach of contract; jointly submit the application to the Trademark Office and follow up on the approval announcement; for cross-border or corporate mergers and acquisitions, relevant provisions can be combined accordingly.Business and contract dispute resolution services for enterprisesImprove the transaction structure.

5. Hengluo Law Firm's Reminder

The transfer of a trademark is not just a matter of signing a contract. The key lies in ensuring the integrity of rights and avoiding the risk of confusion. It is essential to transfer all similar trademarks in the same family, clear away licensing and pledge burdens, and stipulate in the contract the exit and compensation liability in case of unsuccessful approval; be cautious about accepting trademarks that are subject to disputes to avoid spending money to buy into disputes. After the transfer, promptly handle the approval and announcement procedures to ensure the effectiveness of ownership protection. If it involves complex asset packages or cross-border arrangements, it is recommended to entrust a professional lawyer to conduct due diligence. You can also seek assistance from relevant professional institutions or platforms to help you handle the transfer process more efficiently and effectively.Special services and other case-related servicesEvaluate the plan.

VI. Frequently Asked Questions

Q1: Is the trademark transfer always approved, or could it be rejected?

The transfer will not be approved automatically. The Trademark Office will review whether similar trademarks in the same family are transferred together, whether it is likely to cause confusion or other adverse effects; if similar trademarks are omitted or there is a risk of confusion, the applicant will be required to make corrections or the transfer will not be approved. In addition, if the trademark has rights encumbrances or ownership disputes, it will also affect the processing. Therefore, conducting a comprehensive search and due diligence before the transfer is the key to reducing the risk of rejection, rather than considering the transfer of rights based solely on a contract.

Q2: When handling a trademark transfer, what materials do I need to prepare?

The core materials include: the transferor and transferee's qualification certificates, the transfer application signed by both parties, the registered trademark certificate, the transfer contract (stating the subject matter, consideration, and delivery conditions), and a list of similar trademarks involved in the transfer. If entrusting an agent, a power of attorney is also required. The materials should ensure consistent information and authentic signatures. If there are licenses or pledges, the relevant consent documents from the rights holders should be attached. Only when all materials are complete can the trademark office proceed with the review smoothly, avoiding delays due to corrections or supplementation.

Q3: How much does it cost to transfer a trademark?

The fees include two parts: first, the transfer fee paid to the National Trademark Office, the standard of which is announced by the competent authority and the amount is relatively fixed; second, if the transfer is entrusted to an agency or a law firm, service fees will be incurred, which will depend on the number of trademarks, the complexity of the case, and whether due diligence is involved. The specific amount will be determined by the entrustment contract. The transaction price itself is negotiated by the two parties and is unrelated to the official fees. It is recommended to clarify the responsibilities for various fees in the contract to avoid disputes over agency fees and correction costs in the future.

Q4: How long does it usually take from applying for a trademark transfer to having it approved?

After the Trademark Office accepts the transfer application, it will conduct a review in accordance with the law. In practice, the approval and announcement can usually be completed within a few months, with the specific timeframe subject to the review progress of the competent authority. If there are corrections or objections, the timeframe will be extended accordingly. After the transfer is approved and announced, the transferee shall enjoy the exclusive right to use the trademark from the date of the announcement. It is recommended to reserve a review period at the transaction node and make the approval a prerequisite for payment or delivery to avoid misalignment of funds and ownership rights due to non-approval.

Q5: I want to transfer or acquire a trademark. What should I do first?

There are four steps recommended: First, entrust a professional search to sort out the rights status and encumbrances of the target trademark and similar trademarks in the same family; Second, investigate licensing, pledges, freezes, and infringement disputes, and, if necessary, have a lawyer issue a due diligence opinion; Third, sign a written transfer contract, clarifying the scope of the transfer, the consideration, the delivery, and the responsibilities in case of unsuccessful approval; Fourth, jointly submit an application to the Trademark Office and follow up on the approval announcement. Throughout the process, keep the application and acceptance certificates to ensure that the transfer of ownership is legal and effective and can be used to oppose third parties.

This article is written based on the common judicial interpretations in the Beijing area. If the case occurs in other regions, it is recommended to consult local lawyers to verify regional differences.

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 Liu Yuanyuan·Beijing Hengluo 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. In case of disputes, please consult a practicing lawyer in time.