Necessity of Notarization in the Transferring Trademark
2021-02-20 Janlea News

As resources of trademarks become more and more scarer, when applicants apply for new trademarks, many of them found existence of prior applied or registered similar or identical trademarks. So, in order to reduce the infringement risks posed by possible administrative procedures, or posed by use non-registered trademarks, more and more applicants consider solving the use of trademarks via purchase prior trademarks. Recently, cases of purchasing trademarks are on the rise. In processing of such kind of cases, people always focus on whether it is necessary to make notarization for transferring trademark? Also, this is a question frequently asked by many purchasers or transferers. Most of transferers suppose that such kind notarization is a unilateral bound on them, moreover, not to be trusted. Several buyers consider that there is no necessary to make notarization because of the conclusion of agreement of transferring. 

Although the Trademark Office of China National Intellectual Property Administration has not required relevant notarial certificates for transferring trademarks when filing the transferring of trademarks, in the practice, we consider it is necessary for the transferer to issue the notarization for transferring trademarks, or the notarization of the transferring agreement concluded between the transferer and transferee. 

First of all, the notary personnel will verify two parties’ identities and relevant documents in the course of notarization, to ensure the authenticity of such kind of documents and identities, furthermore, to standard behaviors regarding transferring trademarks. Take the notarization of transferring statement filed by the trademark’s transfer as an example, if the main body of the transfer is a company, as per the notarization office’s usual requirement, the transfer needs to file documents below, 1. Transfer’s business license, 2. The legal person and shareholders should be on-site and provide valid identification cards, 3. Shareholders’ resolutions, 4. Agreement for assignment concluded between the transferer and transferee, 5. Articles of association, 6. Registration certificate of trademark. 

Also, the transferee needs to provide valid identity certificate. The notarization will be conducted after the required documents and identity cards have been verified by the notarization office. The notarization of the assignment of agreement will claim two parties based on the requirements on the transferer. As a result, the notarization is not only the bound and regulation on the transferer, but also the on-site verification on the transferee’s identification, moreover, it is an guarantee on two parties’ interests. 

Furthermore, the notarization could reduce risk in the course of transferring trademark as much as possible, in order to avoid any disputations, avoid to any unnecessary troubles. Although in the practical operation, two parties will regulate and claim obligations and rights in the assignment agreement, this cannot prevent some people will trick in the course of transferring trademark, and to ask more extra economic compensation via put the pressure on the transferee, otherwise, will not coordinate to process any follow-up work. We have an client has overseas related business, which wanted to buy a trademark from domestic individual, the client consulted us whether it is necessary to require the transferer for the notarization, because the transferer said the notarization is not necessary, they will perform strictly their obligations in accordance with the concluded agreement. However, we advised that the transferer should make notarization in order to guarantee two parties’ interests. Afterwards, we learnt from the client that the transferer went back on the issue after filing the application for the transferring, has withdrew the application for transferring the trademark from the trademark office, furthermore, the transferer claimed they have known nothing about the transferring, moreover, to ask economic compensation from the transferee. However, the application for withdrawing the transferring of trademark should be filed by the transferer and transferee at the same time. The Trademark Office issued the notification to the transferer, the transferer filed the assignment agreement signed by two parties, as well as the notarization of the assignment statement that applied by the transferer. The application of transferring has been approved after the Trademark Office’s verification on such kind of documents.

Thus, the notarization in the process of transferring trademarks is not necessary but is indispensable. Of course, the transferred trademark has obtained the registration certificate will be the precondition for the notarization office to claim the notarization. Under the situation that the application of transferring still not be established, the office will not conduct such kind of notarizations. To compile the assignment agreement will play crucial role in case that the notarization cannot be conducted, rights and obligations of both parties will be prescribed in detail, furthermore, to guarantee both parties’ practical interests. 

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Copyright © 2009-2019 Janlea All Rights Reserved