Trademark assignment is the legal act by which a trademark registrant transfers the exclusive right in its registered trademark to another person in accordance with the law. An assignment requires a joint application by the assignor and the assignee to CNIPA; upon approval and publication, the assignee acquires the exclusive right from the date of publication.
Legal Basis
Article 42 of the Trademark Law provides that, to assign a registered trademark, the assignor and the assignee shall sign an assignment agreement and jointly file an application with CNIPA. The assignee shall guarantee the quality of the goods on which the registered trademark is used. When assigning a registered trademark, the registrant shall simultaneously assign identical or similar trademarks registered on the same or similar goods. CNIPA shall not approve an assignment that is likely to cause confusion or has other adverse effects, and shall notify the applicant in writing with reasons. An approved assignment of a registered trademark shall be published, and the assignee enjoys the exclusive right from the date of publication.
Core Rules
The joint application principle: a trademark assignment cannot take effect on the parties' contract alone — a joint application to CNIPA is required. The contract binds the parties, but title passes only upon approval and publication; this is the greatest difference between a trademark assignment and an ordinary sale of movable property.
The simultaneous assignment principle: identical or similar trademarks on the same or similar goods must move as a package, preventing the same source identifier from being split among multiple owners and confusing the market.
Confusion examination: where an assignment is likely to mislead consumers as to the origin of goods, or has other adverse effects, CNIPA will not approve it. For example, assigning a trademark containing a geographical indication to a company located elsewhere may be refused for misleading the public.
Assignment vs. Transfer by Operation of Law
Trademark practice also recognizes "transfer" (yizhuan), meaning a change of ownership arising from non-sale causes such as inheritance, merger or division of enterprises, or court judgments. Transfers are likewise subject to rules such as simultaneous assignment, and may be applied for unilaterally on the strength of the relevant legal documents.
Restricted Circumstances
- Where the trademark is under a registered pledge, the pledgee's consent is required;
- Where the trademark is frozen by a court, it may not be assigned during the freeze;
- Pending non-use cancellation or invalidation proceedings do not prohibit assignment, but their outcome determines whether the right survives, and the buyer should be fully informed;
- The assignment of collective marks and certification marks is subject to eligibility restrictions.
Assignment vs. Licensing
An assignment is an ownership-style, one-time transfer after which the original right holder exits entirely; a license is a time-limited grant of use rights, recovered at the end of the term. Use assignment to monetize idle trademarks or sell brand assets; use licensing for brand extension and franchise systems — the two can be combined.
Practical Points
The buyer should conduct due diligence to verify the trademark's status, the inventory of similar marks and encumbrances; tie payment of the price to approval and publication; and after publication, promptly handle follow-up matters such as clearing licenses and updating customs recordation, bringing the trademark into its own file management and recording the new renewal expiry date.
The practical judgment behind these concepts requires case-specific analysis; before filing, you may book a recorded trademark agent at MyTMBee for targeted advice.