CHINA Law and Practice Contributed by: Chuanhong Long, Bin Zhang, Cuicui Liang and Lei Fu, CCPIT Patent and Trademark Law Office
6. Assignments and Licensing 6.1 Assignment Requirements and
6.2 Licensing Requirements or Restrictions For the purpose of public records, a licence must be filed against only registered marks, as required by the CNIPA. For the licensing of unregistered marks, there is no specific provision. A contract between a licensor and licensee regarding an unregistered mark is usually deemed as valid. All three types of licence – exclusive licence, non- exclusive licence and sole licence – can be recorded. The licence term must be within the validity period of the registration. It is recommended that a written copyright licence agreement should be signed and registered with the CPCC or competent copyright authorities. A written agreement that is signed and registered will protect both parties’ interests and effectively reduce the risk of disputes caused by misunderstandings. A copy - right property right can be licensed through either a sole licence or a non-exclusive licence. Normally, the copyright owner can exploit the work even if the copy - right has been licensed. The term of a licence should not exceed the validity term of the copyright itself. The details of the licence may be agreed upon by contract between the parties. 6.3 Registration or Recording of an Assignment or Licence The assignment and licence must be recorded with the CNIPA. If they are not, neither the assignment nor licence can be used against bona fide third parties. After the approval of the assignment or licence by the CNIPA, the CNIPA will publish the assignment or licence in the Trademark Gazette. Only after receiving the approval of the CNIPA is the assignee recognised as the trade mark owner in Chi - na. Before the approval of the CNIPA is obtained, the assignor remains the owner of the mark in China. For copyright, a written agreement and its registra - tion will protect both parties’ interests and effectively reduce the risk of disputes caused by misunderstand - ings.
Restrictions Trade Marks
If a trade mark is assigned, the assignor and the assignee must sign a written assignment form. The assignment application must be filed with the CNIPA. The assignment application can be filed against reg - istered marks or marks in the process of application. All identical or similar marks in respect of identical or similar goods/services in the name of the assignor will be assigned together. The assignment of a mark will be published after it has been approved by the CNIPA, and the assignee will have exclusive right to use the registered trade mark from the date of publication. In the case of transfer due to inheritance, enterprise merger, merger or restructuring, and other reasons, the party accepting the exclusive right to use the reg - istered trade mark must file the assignment based on the relevant certificates or legal documents. Where the exclusive right to use a trade mark is trans - ferred according to the judgment of the court, the assignment must also be recorded. Partial assignment of trade marks is not permitted. Copyright An assignment of a copyright requires a written agree - ment. The agreement should be registered with the CPCC or competent copyright authorities, to protect both parties’ interests. Notarisation and legalisation of an agreement are not necessary. The copyright owner may transfer part of the property right in the copyright. If the copyright owner is a natural person, after their death, the right to use the copyright and the right to receive remuneration will be transferred in accordance with the provisions of the inheritance law within the period of protection provided by law.
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