Whose Details Go in the Power of Attorney for a Chinese Trademark Assignment

Introduction: the form that derails an assignment

An assignment of a Chinese trademark looks straightforward. The parties agree a transfer, a form is filed, the register is updated. In practice the filed documentation is where assignments stall, and the single most common cause is a power of attorney prepared by the wrong party, or completed with the wrong details.

This article deals with the documentation, not the commercial agreement.

Who is the "principal" and who is the "agent"

The confusion arises from the structure of the filing. An assignment application is filed by a party, and that party may act through an agent. The power of attorney authorises the agent to act for the principal. The question that causes trouble is which of the two companies is the principal.

The answer follows from who is filing. Where the application is being submitted using the assignor's account, or is otherwise being made on the assignor's behalf, the assignor is the principal. In that case the details entered as the agent are the assignor's own details, not the assignee's.

Registrants routinely assume that because the mark is going to the assignee, the assignee should be named. That is wrong. The party on whose behalf the filing is made is the party that appears.

A worked example

Suppose company A owns a Chinese registration and wishes to assign it to company B.

If the filing is submitted under A's information, then in the power of attorney the party named as the agent is A. Not the individual operator, not B. A.

This is counterintuitive, because the field is often read as "who is authorised to act". In this filing structure it functions as "for whom is this being done". Once the distinction is grasped the rest of the form follows.

Where the filing is instead made by B, or by an agency acting for B, the position reverses and B is the principal. The point is not that one answer is always right. The point is that the answer is determined by who is filing.

Practical consequences of getting it wrong

An incorrectly completed power of attorney is not a matter of preference. It produces a formal objection, the application is not accepted as filed, and the matter must be corrected and re-filed. Where the parties are working to a commercial timetable — a financing, a group reorganisation, an asset sale — the delay is real.

The correction is usually simple. The time lost is not.

Where the parties should be careful commercially

Two substantive cautions, since they affect the documentation.

First, quality control. As with licensing, an assignment that leaves the assignor effectively in control of the mark, or that is in substance a licence dressed as a transfer, can be recharacterised. The documentation should reflect what the parties actually intend.

Second, timing in relation to other filings. An assignment that is mid-flight when a cancellation, opposition or invalidation is filed creates a question about who the correct party to that proceeding is. Managing the sequence avoids a procedural mess.

What the filing itself contains

The assignment application identifies the registration, the assignor, the assignee, and the goods or services affected. Where only part of the registration is being assigned, the filing identifies the part, and the register is then split accordingly.

The assignor and assignee are each required to evidence their existence and their capacity to hold rights. For corporate parties this means the relevant registration or incorporation documents; for foreign parties those documents come with the certification and translation burden described above.

Where a Chinese trademark agency acts, its appointment is evidenced by the power of attorney, and this is where the principal-versus-recipient confusion set out earlier does its damage.

Assigning part of a registration

A partial assignment is permitted. The registrant may assign some of the goods or services while retaining the rest, provided the resulting split does not create confusion.

Two constraints apply in practice. The split must leave both the assigned and retained parts capable of standing on their own, and the associated-marks rule still applies: where identical or closely similar marks cover the goods being split away, those marks generally travel with them.

Partial assignments are worth considering where a brand owner has divested a business line but retained the mark for other products. Carving out the relevant goods and services is often better than assigning the whole registration and licensing back what was kept.

Recording the assignment and what follows

Once accepted, the assignment is recorded and the register names the assignee. From that point the assignee is the party to any subsequent proceeding, the party entitled to renew, the party entitled to licence, and the party that must be identified in a customs recordal.

That last point has a specific consequence worth flagging. A customs recordal naming the former owner will not operate for the benefit of the new one. Where a portfolio is being reorganised and goods are moving, the customs position should be reviewed alongside the assignment, because a lapse in customs protection is not visible on the trademark register.

Frequently asked questions

Whose details go in the power of attorney for a trademark assignment?

The party on whose behalf the application is filed. If the application is submitted under the assignor's information, the assignor is named. The field identifies the principal, not the recipient of the mark.

In an A to B assignment, is B ever named?

Only if B is the party filing the application, or if an agent is acting for B. The answer is determined by who is filing, not by who receives the mark.

What happens if the form is completed incorrectly?

The application is objected to on formal grounds and must be corrected and re-filed. The correction is usually simple, but the delay is real and can disrupt a transaction timetable.

Does the assignor's name have to match the register exactly?

Yes. Where the company has changed its name, the change must be properly dealt with rather than glossed over in the filing.

What about documents from a foreign assignor or assignee?

They generally require notarisation or legalisation and a Chinese translation. The certification chain is a common source of delay for documents from jurisdictions with different notarial practice.

Can I assign one mark out of a family?

Not in isolation where the registrant owns identical or closely similar marks covering the same or similar goods. Those marks must generally be assigned together to avoid a confusion objection.

Does the assignment need to be recorded to take effect?

As between the parties the agreement governs, but recordal is what updates the register and makes the change effective against third parties. Enforcement, customs and licensing arrangements all depend on the recorded position.