Yes, they must be assigned together. Article 42 of the Trademark Law expressly provides that, when assigning a registered trademark, the registrant shall simultaneously assign identical or similar trademarks registered on the same or similar goods. Where they are not assigned together, CNIPA will notify the applicant to correct within a time limit; failure to correct by the deadline is deemed a withdrawal of the assignment application.
Legislative Purpose
This rule exists to prevent market confusion. If similar trademarks of the same proprietor on similar goods ended up in different hands, consumers could no longer distinguish the source of goods, and the assignment system itself would become a tool for creating chaos. The law therefore compels similar trademarks to move as a single package.
How to Determine the Scope of Simultaneous Assignment
- Identical trademarks on the same goods: must be assigned together;
- Similar trademarks on the same goods: must be assigned together;
- Identical or similar trademarks on similar goods: must be assigned together;
- Identical trademarks on dissimilar goods: generally not compulsory, but CNIPA may still refuse approval if the split is likely to mislead the public.
Similarity of goods is usually determined by reference to the Classification Table of Similar Goods and Services, combined with market realities. Identical marks on goods that are cross-class but highly related (such as Class 29 foods and Class 30 convenience foods) are often required to be handled together in practice.
Practical Recommendations
- Before signing, the seller should self-audit all trademarks under its name and list those identical or similar to the target mark;
- The assignment application should list every trademark subject to simultaneous assignment to avoid corrections;
- Defensive similar trademarks that the seller does not wish to assign may be cancelled first, after which the main mark is assigned — but assess the defensive gap this leaves;
- In due diligence, the buyer should focus on similar trademarks under the seller's name to prevent the seller from retaining similar marks that later compete.
Failure to assign similar trademarks simultaneously is a frequent cause of corrections and refusals; both parties should verify the full picture in advance.
In similar situations, it is advisable to consult a recorded trademark agent at MyTMBee first, assess whether a trademark assignment is needed, and then decide on the next step.