Official Document of Trademark Office of State Administration for Industry and Commerce

TM(1997)No. 39

NOTICE CONCERNING THE PUBLICATION OF
THE RULES OF RECORDING THE TRADEMARK LICENSE AGREEMENT

To the administrative authorities for industry and commerce of provinces, autonomous regions, municipalities directly under the Central Government, and the planned single cities:

To perfect the system of recording the trademark license agreement, and to formalize trademark license behavior, the Trademark Office has established the Rules For Recording the Trademark License Agreement, which is hereby printed and distributed to you to be put into effect and carried out.

Attachments:
(1) Trademark License Agreement (sample);
(2) Notification for Trademark License Agreement Recordal

1. The following rules are made, according to the Trademark Law of the People's Republic of China and the Detailed Implementation Regulation Under the Trademark Law of People's Republic of China, to enhance the regulation of the trademark license agreement and to formalize the trademark license behavior.

3. The trademark license agreement shall be signed voluntarily upon bona fides.

   Any organization or individual shall not, by using this agreement, take any illegal activities which are harmful to the public interest of the society and the consumer rights.

4. The licensor shall submit a copy of the trademark license agreement to the Trademark Office for recordal within three months from the date of the signing of the agreement.
5. To file the agreement for recordal with the Trademark Office, one may either entrust a trademark agency designated by the Administration for Industry and Commerce or go to the Trademark Office directly.

   Foreigners or foreign companies as licensors shall entrust a trademark agency designated by the Administration for Industry and Commerce as the representative.

6. The trademark license agreement shall but not limited to include the following:

1. the licensed trademark and its registration number;
2. the goods licensed;
3. validity period of the license;
4. the way of providing the reproductions of the licensed trademark;
5. the clause of the supervision by the licensor over the quality of the product bearing the licensed trademark;
6. the clause stipulating that the company name and the production place of the licensor to be indicated in the product bearing the licensed trademark.

3. To record the trademark license agreement, the applicant shall submit the following documents:

1. the Trademark License Agreement Recordal Application Form
2. copy(ies) of the trademark license agreement;
3. photocopy(ies) of the Trademark Registration Certificate

3. Where the licensor sub-licenses his registered trademark to a third party through the licensee, the trademark license agreement shall include the content of permitting the licensee to sub-license the use to a third party, or the relevant written authorization shall be presented.
4. To apply for the trademark license agreement recordal, the application forms shall be filled out according to the number of the licensed trademarks, and accompanied by copies of the agreement and trademark registration certificate.

   To license the use of multiple trademarks by a single contract, the licensor shall file the application forms and copies of registration certificate according to the number of trademarks. However, only one copy of the trademark license agreement could be submitted.

5. To apply for the trademark license agreement recordal, the licensor shall pay the recording fees according to the number of the licensed trademarks.

   The recording fee can be paid either directly to the Trademark Office or by entrusting a trademark agency. The concrete standards for charge shall be consistent with the relevant regulation concerning trademark matters.

6. In the following circumstances, the recordal application shall not be accepted by the Trademark Office:

1. the licensor is not the registrant of the licensed trademark;
2. the licensed trademark is not consistent with the registered trademark;
3. the registration number of the licensed trademark is not that of the registered trademark;
4. the licensed period goes beyond the validity period of the registered trademark;
5. the licensed goods are not within the goods designated for the registered trademark;
6. the trademark license agreement lacks the contents enumerated in Article 6 of this rule;
7. the recordal application lacks the documents enumerated in Article 7 of this rule;
8. the recordal application fee remains unpaid;
9. documents in foreign languages of the application are not accompanied by their Chinese versions;

3. Where the formalities are complete and in compliance with the Trademark Law and the Detailed Implementation Regulations of the Trademark Law, the Trademark Office shall accept the application.

   The recorded trademark licenses shall be collectively published in the second issue of Trademark Gazette of every month and the Trademark Office shall issue the written notification to the applicant.

4. The non-qualified applications shall be returned with an explanation by the Trademark Office.

   After making the amendment to the documents according to the request of the Trademark Office, the licensor shall be able to re-file within one month from the date of receiving.

5. Under following circumstances, a fresh trademark license recordal shall be filed:

1. the licensed goods has been changed;
2. the licensed period has been changed;
3. the proprietorship of the licensed trademark has been transferred;
4. other situations for re-application.

3. Under following circumstances, the licensor and licensee shall notify, in written form, the Trademark Office and the respective Administration Office for Industry and Commerce of county level at their own location:

1. the licensor's name has changed;
2. the licensee's name has changed;
3. the trademark license agreement has been terminated;
4. other situations for notification.

3. Approved applications procured by deceitful or other unfair means shall be canceled and publicized by the Trademark Office.
4. Any organization and individual shall be able to search, in written form, the approved trademark license agreement and to pay the search fees in accordance with the relevant regulations.
5. According to Article 35 of the Detailed Implementation Regulation under the Trademark Law, the licensor and licensee shall submit a copy of the trademark license agreement to the administration for industry and commerce of their own location for record within three months from the date of signing in the agreement. The detailed recording procedures shall be conducted according to the Rules.
6. According to Trademark Law and other laws, rules and regulations, the administrations for industry and commerce above the county level are responsible for the instruction, supervision and regulation of the licensed use of the trademark.
7. Where illegal activities are perpetrated by using the trademark license agreement, the administrative authorities for industry and commerce above the county level shall take measures according to the Trademark Law and other laws, rules and regulations. Where it constitutes a crime, the responsible person shall take legal liabilities.
8. The trademark licensor in the Rules refers to those who license others to use their registered trademark. The trademark licensee in the Rules refers to those who are so qualified as provided for in accordance with the Trademark Law and the Detailed Implementation Regulation under the Trademark Law, and are authorized by the registrant to use his trademark.

   The regulations concerning the trademarks in the Rules are also applicable to service marks.

9. The sample trademark license agreement shall be established and publicized by the Trademark Office.
10. The Rules shall be put into effect from the date of its issuance. The Notes about the Recording of the Trademark License Agreement promulgated by the Trademark Office on February 25, 1985 shall be abrogated simultaneously.

According to Article 26 of Trademark Law of People's Republic of China and Article 35 of The Detailed Implementation Regulations under the PRC Trademark Law, the Trademark License Agreement should be signed voluntarily by both licensor and licensee upon the principle of bona fides.

1. The licensor gives the permission to the licensee of the use of the registered trademark " " numbered ________ in International Class _____ in respect of the goods of _____________________________ and the licensed goods includes _____________ of Class _________.