Transfer of ownership of a European Union trademarks
A European Union trademark (EUTR) may be transferred, which means that the ownership of the property of rights of the trademark or the application changes. This way, either the trademark or the application may be transferred from the current proprietor a new one. Transfer may refer to some (partial transfer) or all of the goods or services.
The transfer shall be entered in the Register and published upon request of one of the parties. Registering a transfer is not a condition for its validity, but if not registered by the Office, the entitlement to act remains with the original proprietor. According to article 17.8, all documents which require notification to the proprietor of the trademark shall be addressed to the person registered as a proprietor. As a consequence, the new proprietor will not receive notifications from the Office, in particular, during inter partes proceedings or the notification of the renewal of the mark.
The transfer involves to aspects: (i) the validity of the transfer between the parties and (ii) the impact of a transfer on proceedings before the Office. This impact will only triggered after the Registration of the transfer.
The following are the different kinds of transfers:
- Assignment. Occurs when a registered trademark or application is transferred from one person to another. Transfers made by assignment (except where the assignment is the resolute of a court decision), the former is only valid where the assignment is made in writing and signed in both parties (art. 17.3 EUTRM). This is a formal requirement for the validity of the transfer of the trademark.
- Inheritance. Is also covered by the rules on transfers. When the proprietor of a trademark or application passes away, the heirs will therefore become proprietors of the registration or application by the way of individual or universal succession.
- Merger. It is also considered as a transfer when there is a merger between two companies which leads to the formation of a new company or an acquisition by one company taking over another company. Where the whole of undertaking to which the mark belongs is transferred, there is a presumption that the transfer includes the trademark, unless in accordance with the law governing the transfer, an agreement to the contrary was made or unless circumstances clearly dictate otherwise.
In contrast to a total transfer, a partial transfer is the transfer or only some of the goods and/or services related to an EUTM application or registration. It involves the distribution of the original list of goods and services between the original and the new registration or application. At the beginning of the proceeding there is only one mark, the called ‘original mark’, which is the mark for which a partial transfer has been applied for. Afterwards, once the registration of the transfer has been done, there are two marks: (1) the mark that now has fewer goods and services, called ‘the remaining mark’, and (2) ‘the new mark’ which was some of the goods and services from the original mark.
In these cases, ‘the remaining mark’ will retain the EUTM number of the original mark and ‘the new mark’ will have a new EUTM number.
On the other hand, transfer cannot affect the unitary character of the EUTM, therefore, an EUTM is unable to be transferred for only some territories of the Member States, because, according to article 16 an EUTM as an object of property shall be dealt with in its entirety, and for the whole area of the Community.
Guidelines for examination of European Union Trademarks. EUTMS as objects of property