After a three-year trial, the case of Kirin Kyowa Foods Co.,
Ltd. vs. Chen and Wang over a trademark assignment contract has
currently been decided by the first instance. Kirin Kyowa Foods
Co., Ltd. (the "Plaintiff"), as the
proprietor of the trademark
"可得然" , appointed
Shanghai Aucane Enterprise Co., Ltd.
("Aucane") as its sales agent for
gelatine bearing the
"可得然" trademark. In
March 2006, Chen (the "Defendant"), the
legal representative of Aucane, preemptively filed an application
for registration of "CURDLAN", which is the English
equivalent of the "可得然"
trademark at the China Trademark Office (the
"TMO"). In 2007, both parties signed a
Trademark Assignment Contract (the
"Contract"), requiring the Defendant to
assign the trademark "CURDLAN" to the Plaintiff at the
price of US$2,000. In May 2008, the TMO took office action on the
grounds that "the assignor's signature is evidently
inconsistent with the one filed with the TMO in the past", and
required the Plaintiff to provide a copy of the assignor's ID
card and its notarized statement of agreement on the said trademark
assignment. However, the Defendant failed to provide any of the
above materials, causing the TMO to refuse the assignment of
"CURDLAN", and thus the Plaintiff appealed to the
During the trial, the Plaintiff filed a petition requesting the
court to confirm the effectiveness of the Contract and to order the
Defendant to perform its obligations prescribed in the Contract by
claiming that the Defendant's signature on the Contract is
identical to the one on the business registration materials at the
Administration of Industry and Commerce
("AIC"). The Defendant argued that the
Contract was invalid due to the fact that it was signed on behalf
of the Defendant by a third party, Wang, who is the defendant's
husband, under coercion by the Plaintiff. Wang affirmed that he
signed the signature of Chen on the Contract without authorization
of the Defendant. According to judicial authentication, the
signature of Chen on both the Contract and the AIC registration
materials is handwriting from the same person.
In the end, the court held that the assignment contract of the
trademark "CURDLAN" reflected true meanings of both
parties. The signature was considered credible based on the fact
that it is identical to the one on AIC registration materials. Even
though the Contract was signed by the third party, the Defendant
did not oppose after being informed and further accepted the
consideration provided by the Plaintiff, so that the Contract came
into existence. Therefore, the court ruled that the Defendant shall
assist the Plaintiff in completing the procedures of trademark
assignment in accordance with the Contract.
Although the court of the first instance eventually decided that
the Contract is legitimately effective, the Plaintiff has already
spent considerable time, efforts and attorney fees on this case. In
the event that the Defendant appeals against the decision to a
higher court, the Plaintiff will have to spend even more time and
efforts and bear higher costs. Therefore, in order to prevent such
disputes and ensure the application for trademark assignment to be
approved by the TMO, it is suggested that when signing a trademark
assignment contract, the assignee should request the assignor to
provide a copy of ID card or a copy of business license affixed
with company seal as attachments of the contract, and then both
parties sign the contract before a Notary Public prior to filing
with the TMO.
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