Tips For Recording Change Of Name/Address – Trademark

In mainland China, it is not prohibited for the same right
holder to repeatedly register the same or similar trademark for
same/similar goods or services, except those excessive trademark applications obviously exceed
reasonable business scope or suspected of malicious applications
without the intention of use. We often encounter a type of trademark rejection where in the notification
of refusal; it is found that the applicant’s prior same or
similar trademark cited to bar the registration of their later
filed trademark.

The reason behind this is that the applicant, based on
commercial needs, has made changes to their name or address. The
re-filed trademark application uses a new name or/and address, but
the applicant has not promptly recorded the change of name or/and
address with the National Intellectual Property Administration, PRC
(“CNIPA”) for their previously registered trademark under
the old name/address. Therefore, the later filed trademarks and the
previously registered trademarks will be regarded as applied for by
different entities, thus leading to the situation mentioned earlier
where the prior trademark bars the subsequent same or similar
one.

In such a case, although the applicant can overcome this
rejection during the review of refusal stage by recording change of
the name/address for their prior trademark, we believe that it is
crucial to promptly record the changes with the CNIPA in advance to
save time and costs, as well as avoid such rejection
situations.

So, if there is no such problem of refection with the
applicant’s trademark application, can the change recordal be
skipped?

The answer is NO.

Article 41 of the Trademark Law: “Where the name or
address of registrant or any other registered matter of a
registered trademark needs to be modified, an application for
modification shall be filed.”

Article 49.1 of the Trademark Law: “Where, in using a
registered trademark, the trademark registrant changes the
registered trademark, the name or address of the registrant, or any
other registered matter without approval, the local administrative
department for industry and commerce shall order the registrant to
make correction within a prescribed time limit; and if the
registrant fails to do so within the time limit, the Trademark
Office shall cancel the registered trademark.”

Article 17 of the Regulations for the Implementation of the
Trademark Law: “If the applicant changes its name, address,
agent, recipient of documents, or deletes designated goods, it
shall go through the procedures for change with the Trademark
Office.”

Article 3 of General Criteria for Judging Trademark
Violations: The general illegal acts referred to in this standard
refer to acts that violate the order of trademark management. The
following acts shall be deemed as general trademark violations: (5)
Violating the provisions of Article 49.1 of the Trademark Law
mentioned above.

For trademark rights holders, failing to promptly file changes
to their information may have the following impacts:

1. Impacts on the commercial use of the trademark. For instance,
when the right holder intends to use the trademark commercially
(entering shopping malls or opening stores on various e-commerce
platforms), if there is a discrepancy between the entity
information of the right holder and the registered trademark
information, it may affect the verification process by malls and
platforms. This could result in the inability to enter
malls/platforms until the information is unified.

2. If not recorded in a timely manner, it may involve general
trademark violations.

In conclusion, recording change of name or/and address cannot be
selectively ignored. In accordance with the requirements of laws
and regulations, recording the change of name or/and address is the
fastest and most economically effective way to solve problems and
avoid the emergence of new ones. It is worth noting that while the
applicant changes the name or/and address for their national
trademark applications/registration, they should also apply for
changes to their Madrid international registrations extended in
China.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.