Chinese IP Law Updates
December 6, 2016

What kind of business problems are revealed to us from this Trademark Assignment Invalidation Judgment made by the Court?

According to a recent published First Instant Judgment* (*2015 CZMCZ No.: 02062) made by Changsha Municipal Intermediate People’s Court of Hunan Province, it was ruled that the assignment of the involved trademark was deemed invalid.

Briefly speaking, the Defendant filed a trademark assignment application with the Trademark Office and finished all formalities through an agency without authorization.

Fortunately, the Court who protects the trademark right holder’s legitimate rights and interests supported the litigation claim filed by the trademark right holder. Due to timely and effective judicial remedies, it prevented the act of unauthorized trademark assignment from suffering greater losses. Obviously, negligence and deficiency exist in some enterprises in the management process, including IP management.

In China, trademark assignment needs to meet formal requirements, including that the assignor and the assignee shall jointly file an application (or authorize a trademark agency) with providing relevant certification and proof to the Trademark Office. The main problem in this particular case was that administrative vulnerability existed in the enterprise management which lead to the unauthorized usage of important materials and unauthorized completion of trademark assignment.

It is significant for enterprises to enhance personnel management and asset management. In addition, taking timely measures for nipping such problems in advance is the best solution for such management problems.

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