Trademark Office?
1. Laws and Regulations According to Article 41 of the Trademark Law, if a change needs to be made in the name or address of the owner of a registered trademark, an application for the change shall be filed.
According to Article 17 of the Regulations for the Implementation of the Trademark Law, for a pending trademark application, if its applicant changes his name or address, he may apply to the Trademark Office for the corresponding change.
2. Recording name/address change or not According to Article 49 of the Trademark Law, a trademark registrant that changes, without authorization, the registered trademark, the name or address of the registrant or other registration items during the use of the registered trademark shall be ordered to make correction within the prescribed time by the relevant authority, and shall have its registered trademark cancelled by the Trademark Office if it fails to make correction by the prescribed deadline.
In fact, the local authorities rarely initiate active examination on whether the name, address of a trademark registrant (especially a foreign registrant) has changed, and there is no specific regulation on the time limit for filing the change application. So, generally, the name/address can be omitted to save cost. But in some special circumstances, the name change is advised to be recorded in time otherwise problems like the following will arise.
(1) Affect later trademark applications For example, Company A has registered a “TOMO” trademark in Class 5. After changing its name to Company B, it applied for another “TOMO” trademark in class 5. Since the two trademarks are similar, the Trademark Office will reject the trademark applied in the name of company B by citing the prior registered trademark in the name company A. If the name change is filed in time, such situation will not happen.
(2) Affect trademark assignment, recordal of license, renewal or other procedures If a registered trademark is to be transferred, licensed or renewed, the Trademark Office will check whether the information on the registrant's identity certificate is consistent with that of the registered trademark. If the name and address are inconsistent, the application for assignment, recordal of license contract and renewal will be rejected.
(3) Affect defense of non-use cancellation According to Article 49 of the Trademark Law, any entity or individual may apply for the cancellation of a registered trademark that has not been used for three consecutive years without any reasonable reason. The trademark registrant shall provide use evidence or state the reasons of non-use in response to the cancellation action. If the name of the registrant has changed in the prescribed three consecutive years, the evidences of use might have a problem of different name of users. For example, the sales contract was signed in the name of Company A, while delivery note and invoice are in the name of company B. The registrant needs to provide the certificate of change to prove that these evidences are in correspondence with each other, which brings some inconveniences.
3. Suggestions on the time of recording the change Applicants / registrants can decide whether to record the change according to their specific situation. Generally speaking, if the enterprise has only pending trademark applications, or it has registered trademarks, but has no plan to apply for new identical or similar trademarks or other trademark business to handle such as transfer, license, renewal, defense of non-use cancellation concerning the registrations, the change could be omitted or delayed for a period. To the contrary, if the enterprise intends to apply for the same or similar trademarks soon, or needs to handle transfer, license, renewal or defense of non-use cancellation in the near future, it is advised to record the change before the Trademark Office as soon as possible.
4. How to record name/address change ・A foreign registrant needs to entrust a Chinese agency to apply for the change.
・A change application can be submitted in paper or online. The official fee for change application in paper is RMB 150 (about USD22) per piece, and online application is free of charge.
・A change for name and address of the trademark applicant/registrant can be recorded at the same time. The name change needs a change certification document while the address change does not need it.
・When the registrant decides to record the change of name or address, he shall make the recordal for all his trademarks at the same time; if the recordal is not made for all the marks, the Trademark Office will notify the registrant to make a correction within a time limit; if some marks are no longer used, the registrant can file a removal application for them.
