As trademark resources become increasingly scare, many applicants of trademarks have found existence of many prior applied-for or registered similar or identical trademarks in the course of applications for new trademarks. Thus, in order to reduce subsequent possible administrative procedures, or to reduce the infringe risk posed by the usage of applied-for trademark without approval of registration. More and more applicants consider solving problems regarding the use of trademark through purchasing prior trademarks. Recently, cases regarding purchasing trademarks we handle are on the rise. Among such kind of cases, the most frequently asked question is whether the notarization is necessary during the transferring trademark? This is the most frequently question asked by buyers or transferors. Many transferors think such kind of notarization is the unilateral constraint to them, furthermore, they felt not to be trusted, while some of trademarks buyers will think the notarization is unnecessary because they have concluded the agreement of transferring.

We held that, in the practice, it is quite necessary to notary the transferring announcement which issued by the transferor, or to notary the agreement of transferring concluded by the transferor and transferee, although China National Intellectual Property Administration did not require to submit the notarization regarding the transferring of trademark at the same time when filing the application for transferring the trademark. 

First of all, the notary will verify both sides’ identifications and the filed documents during the process of notarization, in order to ensure the authenticity of documents and identifications, also to regularize transferring behaviors. Taking the notarization on the assignment statement issued by the transferor as an example, if the transferor is a company, usually, the notary office will require the transferor to offer followings: 1. The business license of the transferor; 2. The legal person and shareholder will need to on-site for offering valid identifications; 3. Shareholders Resolutions; 4. Assignment statement concluded between the transferor and transferee; 5. Articles of Associations; 6. Trademark Registration Certificate. Also, the transferee will need to offer valid identification. After the notary office verifies documents and relevant identifications, the notarization will be started. For the notarization on the assignment statement, will demand both sides according to above requirements to the transferor. As a result, the notarization is not only the restriction and constraints to the transferor, but also the on-site verification to the transferee’s identification, it is an guarantee to benefits of both sides. 

Secondly, the notarization can reduce potential risks as much as possible during the transferring of trademarks, to avoid unnecessary troubles may be posed by any possible subsequent disputes. In the practical operation, both parties will write down their own rights and obligations in the assignment agreement, however, this cannot stop someone to play tricks during the transferring of trademarks, then, the transferee may be coerced to pay additional compensation in money, otherwise, they will not cooperate any following procedures. We, once, had a foreign client intended to buy a trademark from a domestic individual. This foreign client consulted us whether they need to ask the transferor to do the notarization, because the transferor said there is no necessary for the notarization, he will strictly perform obligations that are stipulated in the assignment agreement. However, we advised the transferor to do the notarization for guaranteeing both parties’ benefits. Afterwards, the foreign client has been informed the transferor recanted after filed the application of the transfer, and then, the transferor filed application for cancelling the transfer and claimed they did not know the status, furthermore, to ask the transferee to pay additional compensation in money. However, the application for withdrawing the transfer should be filed by the transferor and the transferee at the same time, the Trademark Office issue notification to the transferor, the transferor filed the assignment agreement that concluded by two parties and the notarization of assignment statement applied by the transferor. The application for transfer has been approved by the Trademark Office examined such kind of evidence. 

Thus, the notarization is not compulsory during the transferring, but it is necessary. Of course, generally, the notary office requires that the premise of the notarization is that the transferred trademark has obtained the registration certificate. If the status of the application for transferring trademark has not been established, the notary office will not handle such notary. If such kind of notary cannot be handled, then, the composition of the assignment agreement will play very important role, it will make specific regulations in detail on both parities’ rights and obligation, furthermore, to guarantee both parties actual benefits.