眾律國際法律事務所

Transfer v Change of name of EUTR

During the examination of a pending EU trademark as well as after the trademark has registered, the owner of a trademark may change for various reasons. Some trademarks owners transfer their ownership to a different entity (through assignment or inheritance, for example). In addition, some trademark owners can change their names while retaining ownership. Therefore, these are two different legal concepts, which must be distinguished between each other. As a result, the application for the change of name of a proprietor of an EUTM registration or an application for transfer are two separate proceedings.

In accordance to Article 48(2) of the EUTMR a transfer is an alteration substantially affecting the identity of a trademark as originally registered, which is the key to difference both concepts. The change of identity will determine if a change of name or a transfer takes place. In particular, there is no transfer is involved when a natural person changes their name following an official procedure for changing name, when a pseudonym is used instead of the civil name and if a natural person changes their name due to marriage, since in these cases the identity of the proprietor is not affected.

In case of corporations or legal persons, if there is no termination of the legal entity (for example in the event of a merger, where one company is completely absorbed by and another one and the first one ceases to exist) and no start-up, there is only a change in the formal corporate organisation and not in the actual identity itself. Therefore, it will never be considered as a transfer and it will have to be registered as a change of name. Normally, if the company registration number in the national register remains the same there is no transfer of the company.

Erroneous applications

When an application is made to record a change of name but the evidence shows that it is actually a transfer for a trademark or trademark application (and vice versa, if the application is made to record a transfer but what is involved is actually a change of name), the Office shall inform the applicant and invite him to file the right application. This communication sets a time limit of two months starting from the date of the notification and if the applicant does not agree or does not modify his request the application to record a change will be rejected. The party concerned may file an appeal against this decision.

Reference:

Rules 26 (1)(5)(7) and 31(1)(6) EUTMIR. Implementing Council Regulation on the Community Trade mark

http://eur-lex.europa.eu/legal-content/EN/TXT/?qid=1456313803781&uri=CELEX:01995R2868-20090501

Guidelines for examination of European Union Trademarks. EUTMS as objects of property

https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/law_and_practice/trade_marks_practice_manual/WP_LR_2016/Part-E/03-part_e_register_operations_section_3_ctms_as_objects_of_property/part_e_register_operations_section_3_chapter_1_transfer_en.pdf