Is it necessary to register a trademark use license?

After you have a trademark, your product will be unique. You need to apply for the trademark. After the trademark can be used, there will be a license. So, does the trademark license have to be registered? The editor of Legal Savior Network has brought the following legal knowledge through your questions. I hope it will be helpful to you.

Does trademark use license need to be registered?

According to the provisions of the Trademark Law, licensing others to use its registered trademark , the licensor shall submit its trademark use license to the Trademark Office for record, and the Trademark Office shall announce it. The trademark use license shall not be used against bona fide third parties without registration.

Required materials:

1. Original trademark license contract (or copy with official seal) 2 copies);

2. 2 copies of the "Trademark Registration Certificate", 2 copies of the permitted and permitted "Business License" (with official seal) ;

3. 2 copies of "Trademark Agency Power of Attorney" (the unit must be stamped with the official seal) and 2 copies of "Application Form for Registration of Trademark License Contract".

Trademark right is the property right that an enterprise enjoys over a registered trademark. However, in order for a registered trademark to become an industrial property right and create real or obtainable benefits for the enterprise, it must by using. The use of a trademark first means that the trademark is directly attached to the product, product packaging or container and marketed in the market. In addition, the use of trademarks in commodity transaction documents, or for commercial purposes in advertising, exhibitions, and other business activities, also constitutes use.

The use of a trademark can be either the trademark owner’s own use, or it can be the licensed use of a third party other than the trademark owner. Trademark license is a very important right in trademark ownership. If used properly, enterprises can benefit a lot. Enterprises should pay attention to this.

Trademark license contract and legal risks

(1) Contract parties and legal risks Licensed trademark Must be a registered trademark and the licensor must be the owner of the registered trademark. According to relevant regulations, when using the trademarks of human medicines, medical nutritional foods, medical nutritional drinks and baby food, the licensee must provide certification documents from the health administration department; when using cigarettes, cigars and packaged productsFor the trademark of packaged cut tobacco, the licensee needs to provide documents proving production approval by the national tobacco administration department. If the licensee is outside the mainland of my country, such documents are not required. If the parties to the contract fail to comply with the relevant provisions, they are deemed to be ineligible entities without legal qualifications, thus leading to legal risks of invalidating the contract.

(2) Legal risks of over-scope licensing. The goods or services for which the licensee uses the licensed trademark should be consistent with the goods or services for which the trademark has been approved by the Trademark Office. , shall not exceed the scope of goods or services approved by the Trademark Office. Once the license is used beyond the scope of the license, the licensee may infringe on the trademark rights of others and be held liable for infringement by others; many parties also face legal risks such as contract invalidity and breach of contract.

(3) Legal risks of improper use of trademarks According to regulations, some licensees conceal the actual name of the producer and place of origin in order to prevent the goods from being considered as OEM products. , this improper use of trademarks will lead to administrative legal risks and civil legal risks. According to legal provisions, in this case, the industrial and commercial administration authority where the licensee is located may order the licensee to make corrections within a time limit, confiscate its trademark logo, and may impose a fine of less than 50,000 yuan depending on the circumstances. In addition, if the licensee violates the obligation to use the trademark normally under the trademark license contract, he will face the legal risk of being liable for breach of contract.

(4) Licensing contract filing and legal risks Article 43 of the Trademark Law stipulates: “If others are permitted to use their registered trademarks, the licensor shall The trademark use license must be filed with the Trademark Office and announced by the Trademark Office. The trademark use license may not be used against a bona fide third party without the filing." It is generally believed that the filing of a trademark license contract is not a condition for the trademark license contract to take effect, but is only a procedural requirement. However, the trademark license contract has not been recorded and cannot be effective against third parties. At this time, if the trademark owner transfers the trademark, the new transferee may exclude the licensee's right to use the trademark. Therefore, although failure to register does not affect the validity of the license contract, it also creates legal risks for the licensee.

The above is the relevant answer. When you let others use your trademark, the trademark license must be filed so that it can be recorded in the relevant departments. This protects the rights and interests of the trademark registrant, but sufficient review must be conducted when the trademark is externally linked. If you have other legal questions, you can consult the professional lawyers at Legal Savior Network.