On August 26, 2015, the Trademark Office of The State
Administration For Industry & Commerce of the People's
Republic of China ("TMO") issued revised guidelines
entitled Applications for Recordal of Licenses of Registered
Trademarks, Recordal of Licensor/Licensee Name Change, Recordal of
Early Termination of Trademark Licenses and Recordal of Withdrawal
of Trademark Licenses ("2015 Guidelines"). The 2015
Guidelines are a slightly revised version of guidelines issued in
2014 that were intended to bring the license recordal regime in
line with the 2014 Trademark Law and its Implementing
Regulations. The TMO has not indicated whether the 1997
Measures for the Filing of Recordals of Trademark License
Contracts ("1997 Recordal Measures") will remain in
effect after the establishment of new recordal procedures and the
issuance of the 2015 Guidelines, but it is clear that a number of
provisions of those earlier measures have been rendered moot under
the new regime.
Perhaps the most noteworthy change introduced under the new
recordal regime is the elimination of the requirement that
Trademark License Contracts be submitted to the TMO, and that those
agreements meet certain substantive criteria. Since the 2014
Trademark Law and its Implementing Regulations came into effect,
the trademark license recordal process has been simplified to
entail the filing of a standard application form that contains
basic information on the licensor, licensee, term, scope, etc.
Under the earlier regime, however, the TMO would review
Trademark License Contracts for compliance with substantive
requirements set out in the 1997 Recordal Measures, and would often
reject recordal applications on the basis of non-compliance.
In effect, this earlier practice introduced a substantive review
procedure into the recordal process, and it often forced licensors
to alter the language of standard license contracts or submit
PRC-specific short-form license contracts that were compliant with
the TMO review criteria. The fact that this practice has been
abandoned should come as good news to brand owners with PRC
Under the 2001 Trademark Law and its Implementing Regulations,
trademark license recordals with the TMO were required within three
months of execution of a trademark license agreement, but this is
no longer the case under the new regime. Under the 2014 Trademark
Law and its Implementing Regulations, license recordals continue to
be required, but only "within the valid period of the
While license recordal certificates are occasionally requested
of licensees by the administrative authorities (e.g.,
Administrations for Industry & Commerce) and other third
parties (such as landlords) to confirm use authorizations for
relevant trademarks, the only enumerated "penalty" for
failure to record is the inability to invoke licensed rights
against a third party acting in good faith. The State
Administration for Foreign Exchange no longer requires the
submission of trademark license recordal certificates by licensees
when processing foreign currency royalty payments through PRC
banks, so even with the procedural streamlining under the
2015 Guidelines, the limited practical benefits of trademark
license recordals may no longer justify the costs of recordal for
all licences, or all licensed marks under a license that covers
multiple PRC registered trademarks.
For details of the new guidelines, click here and an unofficial English
translation can be obtained here.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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