A European Union trademark (EUTM) is an asset that can be transferred, assigned, licensed, or pledged independently of the business it belongs to. Whether you are selling your brand, bringing on a licensee, or restructuring your corporate portfolio, you need to know how the EUIPO records these transactions, because an unrecorded transfer cannot be enforced against third parties.
The rules governing EUTM transfers are in Articles 20 to 29 of the EU Trade Mark Regulation (Regulation (EU) 2017/1001, the EUTMR).
Pro tip: Before you sign an assignment or license agreement, run a free trademark check to confirm the mark's current status, and pull the mark's EUIPO register extract to see any recorded licenses, pledges, or pending proceedings.
Assignment (transfer of ownership)
What is an EUTM assignment?
An assignment is the transfer of ownership of an EUTM from one entity (the assignor) to another (the assignee). Under Article 20(1) EUTMR, an EUTM may be transferred:
- Independently of any transfer of the undertaking. You do not need to sell the business to transfer the trademark.
- For all or part of the goods and services for which it is registered.
- In respect of the entire EU only. Partial territorial transfers are not possible, because the EUTM has unitary character.
Types of assignment
| Type | Description |
|---|---|
| Full assignment | The entire EUTM registration transfers to the new owner for all goods and services |
| Partial assignment | The EUTM is split. Some goods or services transfer to the new owner while the original owner keeps the rest. The EUIPO creates a new registration number for the transferred portion |
Recording an assignment with the EUIPO
To record a transfer, submit:
- A request for recording, using the EUIPO's online form.
- Proof of transfer, which can be any of:
- a signed assignment agreement or deed of transfer,
- an extract from the agreement showing the transfer,
- a declaration of transfer signed by both parties, or
- the EUIPO's transfer form signed by both parties.
- The recording fee: EUR 200 per mark. When several transfers between the same parties are filed in one request, the EUIPO applies a cap on the total fee.
Why recording matters
Under Article 27(1) EUTMR, an unrecorded transfer is not enforceable against third parties. Until the transfer is recorded in the EUIPO Register:
- The new owner cannot enforce the mark against infringers.
- The new owner's rights are not opposable to third parties who acquire rights in good faith.
- The EUIPO continues to communicate with the recorded owner, which is where missed deadlines come from.
The GTC advantage: Our trademark assignment service handles the entire transfer, from drafting the assignment agreement to recording with the EUIPO, so your transaction is legally sound and properly documented.
Licensing
What is an EUTM license?
A license authorizes a third party (the licensee) to use the EUTM in commerce. Under Article 25 EUTMR, an EUTM may be licensed for:
- All or part of the goods and services covered.
- The whole or part of the EU. Unlike assignment, licensing can be territorial (for example, a license for France and Germany only).
- An exclusive or non-exclusive basis.
Types of license
| License type | Description |
|---|---|
| Exclusive license | Only the licensee may use the mark in the licensed territory. Even the owner is excluded |
| Sole license | The licensee and the owner may both use the mark, but no other licensees are appointed |
| Non-exclusive license | Multiple licensees may be appointed alongside the owner's own use |
Sub-licensing
A licensee may grant sub-licenses only if the license agreement expressly permits it. Without that authorization, sub-licensing is not allowed.
Recording a license with the EUIPO
Recording a license is optional but recommended. Benefits of recording:
- The licensee can bring infringement proceedings in the circumstances set out in Article 25(3) EUTMR (an exclusive licensee may do so if the owner does not act within an appropriate period after notice).
- Recorded licenses are opposable to third parties.
- The register gives public notice of the arrangement.
To record, submit a request for recording, evidence of the license (the agreement or an extract), and the EUIPO's recording fee per mark per licensee.
Other registrable transactions
Security interests (pledges)
Under Article 22 EUTMR, an EUTM can be given as security (pledged) for a loan or other obligation. The pledge must be recorded with the EUIPO to be effective against third parties.
Insolvency proceedings
Under Article 24 EUTMR, an EUTM may be involved in insolvency proceedings. The insolvency practitioner or the court can ask the EUIPO to note the insolvency on the Register.
Levy of execution
Under Article 23 EUTMR, an EUTM can be subject to a levy of execution (court-ordered seizure). This must also be recorded with the EUIPO.
Required documentation
For all transactions, the EUIPO requires:
| Document | Assignment | License | Pledge |
|---|---|---|---|
| Request form | Yes | Yes | Yes |
| Signed agreement or deed | Yes | Yes | Yes |
| Recording fee | EUR 200 per mark | Per mark per licensee, per the EUIPO schedule | Per the EUIPO schedule |
| Proof of legal capacity | If applicable | If applicable | If applicable |
| Power of attorney | If filed by a representative | If filed by a representative | If filed by a representative |
Partial assignment: key considerations
Partial assignments create a split registration. The original EUTM continues for the retained goods or services, and a new EUTM registration is created for the transferred portion. Consider:
- Potential confusion. If both owners use similar marks for related (but split) goods or services, consumers may be confused.
- Opposition risk. The two resulting registrations may become the basis for opposing each other's future applications.
- Enforcement complexity. Each owner enforces only its portion of the original registration.
The EUIPO may refuse to record a transfer if the documents make it clear that the transfer would mislead the public about the nature, quality, or geographical origin of the goods or services, unless the new owner limits the goods or services to remove the problem (Article 20(4) EUTMR).
Cross-border considerations
Because the EUTM is unitary across the EU:
- Territorial restrictions in an assignment are not possible. You cannot assign an EUTM for "Germany only".
- Territorial restrictions in a license are possible. You can license for specific Member States.
- If you need territory-specific ownership, consider national trademark filings instead.
- If the new owner is based outside the EEA, it must be represented before the EUIPO in all proceedings after the recordal. Our EU trademark service provides that representation, so a non-EU buyer does not need to appoint anyone else.
Tax and due diligence considerations
Outside trademark law, EUTM assignments and licenses can trigger:
- VAT obligations, particularly for cross-border licensing.
- Withholding tax on royalty payments between countries.
- Transfer pricing requirements for intra-group assignments or licenses.
- Due diligence needs. Verify the mark is free from recorded pledges, oppositions, or cancellation actions before acquiring it.
Take tax advice in the relevant jurisdictions before you sign.
Best practices
- Record every transaction with the EUIPO. Unrecorded transfers are not enforceable against third parties.
- Include quality-control provisions in license agreements. Controlling how the mark is used protects its distinctiveness.
- Address termination. Specify what happens to inventory, signage, and digital assets when a license ends.
- Check the register before acquiring an EUTM. Use eSearch plus to review the mark's history and recorded rights.
- Update renewal responsibility. Make clear who handles the renewal after an assignment. The EUIPO writes to the recorded owner, and a renewal missed during a handover is the classic failure.
- Decide on monitoring obligations. Agree which party watches the register and enforces the mark.
Our EU country guide covers the wider EUTM lifecycle, from filing to renewal.
Ready to transfer or license your EU trademark?
Whether you are buying, selling, or licensing an EUTM, proper documentation and EUIPO recording protect your rights.
Check your trademark's status before entering into any transaction, or contact our assignment and transfer team for end-to-end support.
Sources
- EUIPO: Recordals (transfers, licences, and other rights)
- EUIPO: Fees and payments
- Regulation (EU) 2017/1001 on the European Union trade mark
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Frequently Asked Questions
Can I assign an EUTM without selling my business?
Yes. Under Article 20(1) EUTMR, an EUTM may be transferred independently of any transfer of the undertaking. You can sell or assign just the trademark while keeping your business.
How much does it cost to record an assignment with the EUIPO?
The recording fee is EUR 200 per EUTM. When several transfers between the same parties are filed in one request, the EUIPO caps the total.
Can I assign an EUTM for only some goods or services?
Yes. A partial assignment transfers specific goods or services to the new owner while the original owner keeps the rest. The EUIPO creates a new registration number for the transferred portion.
Is it mandatory to record a license with the EUIPO?
No, but it is strongly recommended. Recording makes the license opposable to third parties and supports the licensee's ability to act in infringement proceedings.
Can I license an EUTM for only part of the EU?
Yes. Unlike assignment, which must cover the entire EU because of the EUTM's unitary character, a license can be limited to specific Member States or territories.
What happens if I do not record the assignment?
The assignment is valid between the parties but not enforceable against third parties under Article 27(1) EUTMR. The previous owner remains the recorded owner, which creates problems for enforcement, correspondence, and renewal.
