Recordal is required. Article 43(3) of the Trademark Law provides that where a licensor licenses another party to use its registered trademark, the licensor shall record the trademark license with the CNIPA, which shall publish it. Failure to record does not affect the validity of the license contract, but the license may not be enforced against a good-faith third party.
Legal Consequences of Not Recording
- No enforcement against good-faith third parties: this is the core risk. For example, if the licensor later licenses or assigns the trademark to someone else and the assignee or subsequent licensee is in good faith, the unrecorded licensee cannot assert its "earlier license" against them;
- Disputed standing in enforcement: when infringement occurs and the licensee sues, the other side may challenge its standing on the ground that the license was not recorded (except for exclusive licenses);
- Obstacle in non-use cancellation proof: when defending a non-use cancellation with the licensee's evidence of use, the recordal is the most direct official proof of the license relationship.
Practical Points for Recordal
- Recordal is filed by the licensor (the registrant) and may be entrusted to an agency;
- Materials include a copy of the license contract or recordal materials containing the main terms, stating the licensor, licensee, trademark, scope of goods, license term, and type;
- License types are divided into exclusive license, sole license, and ordinary license, which must be specified at recordal;
- The license term may not exceed the trademark's validity period; after a trademark renewal, a new recordal must be filed.
The Licensor's Incidental Obligations
Article 43 of the Trademark Law also requires: the licensor shall supervise the quality of the goods on which the licensee uses its registered trademark; the licensee shall guarantee the quality of the goods and indicate the licensee's name and the origin of the goods on them.
If you are unsure about any of the above, you can first do archive management at MyTMBee and act only after receiving an analysis opinion from a registered agency.