CHINA Law and Practice Contributed by: Chuanhong Long, Bin Zhang, Cuicui Liang and Lei Fu, CCPIT Patent and Trademark Law Office
Revocation/cancellation and infringement are not heard together. The court for infringement has discretion to determine whether the court will wait for the decision on revocation/cancel - lation. 5.8 Measures to Address Fraud According to Article 44 of the Chinese Trade - mark Law, if a trade mark is registered fraudu - lently, the CNIPA can declare the registered trade mark invalid. Any applicant may request that the Trademark Review and Adjudication Board declare a registered trade mark invalid. Whether copyright registration was filed fraudu - lently will be reviewed by the CPCC or the court on a case-by-case basis.
to use the registered trade mark must file the assignment based on the relevant certificates or legal documents. Where the exclusive right to use a trade mark is transferred according to the judgment of the court, the assignment must also be recorded. Partial assignment of trade marks is not permit - ted. Copyright An assignment of a copyright requires a written agreement. The agreement should be registered with the CPCC or competent copyright authori - ties, to protect both parties’ interests. Notarisa - tion 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 trans - ferred in accordance with the provisions of the inheritance law within the period of protection provided by law. 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.
6. Assignments and Licensing 6.1 Assignment Requirements and
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 registered 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 use from the date of publication. In the case of transfer due to inheritance, enter - prise merger, merger or restructuring, and other reasons, the party accepting the exclusive right
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