Trade mark transfer - art. 20 EUTM Regulation
Comments by: Paweł Wrześniewski
REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 14 June 2017 on the European Union trade mark
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Art. 20
TRANSFER
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1. An EU trade mark may be transferred, separately from any transfer of the undertaking, in respect of some or all of the goods or services for which it is registered.
2. A transfer of the whole of the undertaking shall include the transfer of the EU trade mark except where, in accordance with the law governing the transfer, there is agreement to the contrary or circumstances clearly dictate otherwise. This provision shall apply to the contractual obligation to transfer the undertaking.
3. Without prejudice to paragraph 2, an assignment of the EU trade mark shall be made in writing and shall require the signature of the parties to the contract, except when it is a result of a judgment; otherwise it shall be void.
4. On request of one of the parties a transfer shall be entered in the Register and published.
5. An application for registration of a transfer shall contain information to identify the EU trade mark, the new proprietor, the goods and services to which the transfer relates, as well as documents duly establishing the transfer in accordance with paragraphs 2 and 3. The application may further contain, where applicable, information to identify the representative of the new proprietor.
6. The Commission shall adopt implementing acts specifying:
(a) the details to be contained in the application for registration of a transfer;
(b) the kind of documentation required to establish a transfer, taking account of the agreements given by the registered proprietor and the successor in title;
(c) the details of how to process applications for partial transfers, ensuring that the goods and services in the remaining registration and the new registration do not overlap and that a separate file, including a new registration number, is established for the new registration.
Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 207(2).
7. Where the conditions applicable to the registration of a transfer, as laid down in paragraphs 1, 2 and 3, or in the implementing acts referred to in paragraph 6, are not fulfilled, the Office shall notify the applicant of the deficiencies. If the deficiencies are not remedied within a period to be specified by the Office, it shall reject the application for registration of the transfer.
8. A single application for registration of a transfer may be submitted for two or more trade marks, provided that the registered proprietor and the successor in title are the same in each case.
9. Paragraphs 5 to 8 shall also apply to applications for EU trade marks.
10. In the case of a partial transfer, any application made by the original proprietor pending with regard to the original registration shall be deemed to be pending with regard to the remaining registration and the new registration. Where such application is subject to the payment of fees and those fees have been paid by the original proprietor, the new proprietor shall not be liable to pay any additional fees with regard to such application.
11. As long as the transfer has not been entered in the Register, the successor in title may not invoke the rights arising from the registration of the EU trade mark.
12. Where there are time limits to be observed vis-a-vis the Office, the successor in title may make the corresponding statements to the Office once the request for registration of the transfer has been received by the Office.
An application for registration of a transfer shall contain the registration number of the EU trade mark, particulars of the new proprietor (see further) and document mentioned in art. 20(2) or 20(3) eutm (ie. transfer agreement, court ruling etc.). Where not all the registered goods or services are included in the transfer, you should inform as well about particulars of the registered goods or services to which the transfer relates. And where applicable, the name and business address of the representative of the new proprietor is to be set out.
According to implementing regulations the application for an EU trade mark shall contain the name and address of the applicant and the State in which that applicant is domiciled or has a seat or an establishment. Names of natural persons shall be indicated by the person's family name(s) and given name(s). Names of legal entities shall be indicated by their official designation and include the legal form of the entity, which may be abbreviated in a customary manner. The company's national identification number may also be specified if available. The Office may require the applicant to provide telephone numbers or other contact details for communication by electronic means. Only one address shall, in principle, be indicated for each applicant. Where several addresses are indicated, only the address mentioned first shall be taken into account, except where the applicant designates one of the addresses as an address for service. Where an identification number has already been given by the Office, it shall be sufficient for the applicant to indicate that number and the name of the applicant.
Implementing act from art. 20(6) eutm is Commission Implementing Regulation (EU) 2018/626 of 5 March 2018 laying down detailed rules for implementing certain provisions of Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Implementing Regulation (EU) 2017/1431.
Art. 20 ot the regulation is applied to licensing as well. See art. 25 eutm.
Main 'rights arising from the registration of the EU trade mark' on which art. 20(11) eutm is built are described in art. 9 eutm. According to it the proprietor of that EU trade mark shall be inter alia entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, any sign where the sign is identical with the EU trade mark and is used in relation to goods or services which are identical with those for which the EU trade mark is registered or the sign is identical with, or similar to, the EU trade mark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the EU trade mark is registered, if there exists a likelihood of confusion on the part of the public.
[last update: 7th of April 2020]