Legal risks in enterprise trademark assignment

A trademark is one of the core intangible assets of enterprises, and trademark assignment refers to the transfer of the exclusive right to use the trademark from one party to another. Trademark assignment is a common legal issue in the case of the establishment of the enterprise with trademarks as its investment, the acquisition or sale of enterprises and brands, the liquidation and divestment of enterprises, and other corporate restructuring.

Trademark is an intangible property right, and the transfer and change of its rights has its own characteristics compared with that of the tangible property rights, including: when the parties reach a consensus, the delivery of tangible property is completed upon the transfer of the possession of the tangible property; while in trademark assignment, the assignee cannot obtain a trademark through “possession” – instead, the transfer of rights takes effect only after the competent authorities have handled the assignment procedures and announced it publicly.

Civil legal relationships and administrative legal relationships should be dealt with in the trademark assignment procedure, and the time lag between the effectiveness of the assignment agreement and the transfer of the trademark right also increases the legal risks in trademark assignment.

Wang Yadong is the executive partner and Lu Lei is a partner at Run Ming Law Office