[Direct answer]In the Beijing area, trademark use license contracts are not subject to mandatory registration, but registration affects their opposability. According to Article 43 of the Trademark Law of the People's Republic of China, trademark registrants may authorize others to use their registered trademarks by signing trademark use license contracts, and the licensors shall supervise the quality of the goods. When authorizing others to use their registered trademarks, the licensees must indicate the name of the licensees and the place of production of the goods on the goods using the registered trademarks. The article also stipulates that trademark use license contracts shall be reported to the Trademark Office for registration. However, in practice, failure to register will only result in the lack of opposability to bona fide third parties, and the contract itself will still be valid. It is recommended to conclude written contracts and register them in a timely manner. For more details, please refer to the relevant provisions.Intellectual property protection and corporate legal services.

1. Problem background and typical scenarios

Trademark licensing is a common way for enterprises to leverage their intangible assets and expand their markets. Typical scenarios include: brand owners authorizing contract manufacturers or distributors to use trademarks, trademark licensing in chain franchises, cross-licensing between affiliated companies within a group, and rights holders licensing idle trademarks to others for licensing fees. Many enterprises mistakenly believe that "signing a contract is enough," ignoring the need for filing with the authorities, which results in issues such as "multiple licenses for a single trademark" and licensees being unable to defend their rights against subsequent rights holders. The demand for licensing compliance is particularly prominent among chain and cultural and creative enterprises in the Beijing area. Relevant contractual arrangements can be combined withBusiness and contract dispute resolution services for enterprisesCoordinate and plan things in an organized and efficient way to achieve the best results with the least effort.

II. Key points of contention

There are three main points of contention. Firstly, the scope of the effectiveness of the filing: unfiled contracts are valid between the licensor and the licensee, but cannot be invoked against bona fide third parties. Subsequently, the licensee or the pledgee may receive priority compensation. Secondly, the type and scope of the license: the rights intensity of exclusive, exclusive, and ordinary licenses are different, and using them beyond the scope constitutes infringement. Thirdly, the obligation of quality control: if the licensor fails to supervise and the product quality declines, the licensor may be held liable and affect the reputation of the trademark. In cases involving licensing disputes, reference can be made to the relevant provisions of the Trademark Law of the People's Republic of China and the Regulations on the Administration of Trademarks.Special services and other case servicesEvaluation.

III. Professional analysis by Henglue Lawyers

Combined with a trademark infringement and unfair competition dispute handled by Attorney Liu Yuanyuan of Beijing Henglu Law Firm, we can see the importance of "legally authorized sources" in trademark disputes. The plaintiff, Company A, is a well-known paper industry company. Its "EFGH" trademark was approved for use on Category 5 sanitary napkins and was recognized as a well-known trademark by courts and administrative authorities in multiple regions. The defendant, Company B, obtained authorization from a third party in September 2023 to use the "EFGK" registered trademark and design patent to produce and sell "EFGK" sanitary napkins, which were sold on e-commerce platforms. Company A sued in April 2024, alleging that "EFGK" imitated the well-known trademark and caused confusion in packaging design, demanding compensation of 980,000 yuan. Attorney Liu Yuanyuan argued on behalf of the defendant that: "EFGK" originated from a legally registered trademark and authorized use, and the suffix "GK" was significantly different from "GH", which could be easily distinguished by the general public and was not likely to cause confusion; the packaging design originated from a design patent and did not constitute "packaging design with certain influence"; and the defendant's authorized use period was short, production volume was low, and pricing was low, so the infringement was not serious enough to support the claim of 980,000 yuan. The court partially accepted the argument, finding trademark infringement but rejecting unfair competition, and awarded economic damages of 50,000 yuan and reasonable expenses of 10,000 yuan, totaling 60,000 yuan, which was 920,000 yuan lower than the original claim. This case was handled by Beijing Henglu Law Firm.Liu YuanyuanThe lawyer (practice certificate number: 11101202011201094, subject to the certificate issued by the judicial administrative organ) acts as the agent.

IV. Practical suggestions and legal basis

The legal basis is Article 43 of the Trademark Law of the People's Republic of China (amended for the fourth time on April 23, 2019) (Licensing Contracts, Quality Supervision, Filing and Opposition Effectiveness) and the provisions of the Implementing Regulations of the Trademark Law regarding the filing materials and procedures for licensing. Practical suggestions: Enter into a written licensing contract, clearly specifying the type of license, product scope, geographical area, term, quality supervision, and termination clauses; promptly file with the Trademark Office after signing the contract to oppose bona fide third parties; have the licensee mark the name and place of origin in accordance with regulations; regularly check the use situation to prevent exceeding the scope or quality control. For those involved in licensing structure design, they can combine with the above provisions to ensure legal compliance.Intellectual property protection and corporate legal servicesAdvance.

5. Henglu Law Firm's Reminder

In practice, it is an ironclad rule that a trademark license agreement must be registered to be legally binding. Failure to register means giving up the priority right to others. It is recommended to register the license agreement immediately after signing and to exercise extreme caution when granting an exclusive license—an exclusive license excludes all others, including the licensor, from using the trademark, which has the greatest impact. The licensee must clearly specify the period of validity and remedies for breach of contract. The licensee must also mark the product with its identity and origin to avoid using the trademark illegally. Quality control must not be neglected, otherwise it will undermine the value of the trademark. If professional support is needed, you can seek assistance from a professional organization or lawyer.Special services and other case servicesDraft and file for recordation.

VI. Frequently Asked Questions

Q1: If the trademark use license is not registered, is the contract still valid?

It is valid. The trademark use license contract takes effect between the licensor and the licensee upon its establishment in accordance with the law, and filing is not a prerequisite for the contract to take effect. However, according to Article 43 of the Trademark Law, failure to file the contract may not be used against bona fide third parties—that is, if the licensor subsequently licenses or pledges the trademark to an uninformed third party, the unfiled licensee cannot use the prior license to oppose the third party. Therefore, the contract itself is valid without filing, but the enforceability of rights is limited, and the risks cannot be ignored.

Q2: For trademark license filing, what materials do I need to prepare?

For filing, it is generally required to submit materials such as the application for filing a license contract, the original or notarized copy of the trademark use license contract, the proof of the qualifications of both parties, and the copy of the trademark registration certificate, subject to the specific requirements of the Trademark Office. The contract shall specify the type of license, the scope of goods, the geographical area, the duration, the quality supervision, and the fees. It is recommended to first draft a standardized written contract and then submit it for filing together, to avoid the materials being returned due to incomplete information. When using the trademark, the licensee shall also mark its own name and the origin of the goods in accordance with the regulations to ensure the compliance of its use.

Q3: How much does it cost to hire a lawyer to draft a contract for a trademark license?

The attorney's fees are negotiated based on the complexity of the contract, the type of license (exclusive/non-exclusive/general) and the transaction amount. They are charged on a per-item basis or as a percentage of the contract value, with the specific terms subject to the agency contract. There is no standard pricing. Compared with the risks of infringement or loss of rights caused by missing contract terms or failure to register the contract, the cost of professional drafting and registration is usually worth it. It is recommended to have a lawyer review the scope of the license, the term and quality clauses before signing the contract, and handle the registration on behalf of the client, so as to lock in the opposing legal effect and remedies for breach of contract simultaneously.

Q4: How long does it usually take to complete the registration of a trademark license?

The review period for filing is subject to the actual schedule of the Trademark Office and is generally shorter than the registration review period, which may range from several weeks to several months. The key is to ensure that all materials are complete and the contract elements are intact. Any missing items will be supplemented and corrected, which may result in a delay. After the filing is completed, the licensee's rights will become effective against bona fide third parties. It is recommended to initiate the filing process immediately after signing the contract, rather than waiting until a dispute arises to make up for it. At the same time, keep the contract, filing receipt, and use evidence to form a complete chain of rights, which will facilitate subsequent rights protection or transfer.

Q5: If I license my trademark to others, what specific steps should I take to ensure everything goes smoothly?

The first step is to evaluate the type and scope of the license, clarifying whether it is an exclusive, non-exclusive, or ordinary license, as well as the products, geographical areas, and duration. The second step is to draft a written contract, stipulating quality supervision, fees, breach of contract liability, and termination conditions. The third step is to require the licensee to mark the name and place of origin in accordance with regulations and establish a usage ledger. The fourth step is to promptly file with the Trademark Office to obtain opposability. The fifth step is to regularly check the usage to prevent exceeding the scope or quality control failures. If any unauthorized use is found, the liable party shall be held accountable in accordance with the contract. It is recommended to entrust a lawyer to draft and file the documents throughout the process to ensure compliance and a closed-loop protection of rights and interests.

The above answer is based on the judicial practice in Beijing. The adjudication standards in other provinces and cities may vary. For specific cases, please refer to the local rules and evidence situation.

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 Henglu Law Firm

Disclaimer: This article is compiled based on 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.