EU Trademark Assignment and Licensing: Recording Transfers with EUIPO

EU Trademark Assignment and Licensing: Recording Transfers with EUIPO

A European Union Trade Mark (EUTM) is a valuable intellectual property asset that can be transferred, assigned, licensed, or pledged independently of the business to which it is attached. Whether you are selling your brand, bringing on a licensee, or restructuring your corporate portfolio, understanding the EUIPO procedures for recording these transactions is essential.

The rules governing EUTM transfers are found primarily in Articles 20–29 of the EU Trade Mark Regulation (EU 2017/1001, or EUTMR).

Pro tip: Before entering into any assignment or licensing agreement, run a free trademark check to confirm the mark's current registration status, any encumbrances, and whether it is subject to ongoing 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 — partial territorial transfers are not possible (the EUTM has unitary character)

Types of Assignment

Recording an Assignment with EUIPO

To record a transfer, submit:

1. Request for recording — using EUIPO's online form or paper form
2. Proof of transfer — one of the following:

- A signed assignment agreement or deed of transfer

- An extract from the agreement showing the transfer

- A declaration of transfer signed by both parties

- A completed EUIPO transfer form signed by both parties

1. Recording fee — EUR 200 per mark (reduced to EUR 100 per mark if filed online and in bulk)

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
• EUIPO continues to communicate with the recorded owner

The GTC advantage: Our trademark assignment service handles the entire transfer process — from drafting the assignment agreement to recording with EUIPO — ensuring your transaction is legally sound and properly documented.

Licensing

What Is an EUTM Licence?

A licence authorises 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 (e.g., licence for France and Germany only)
• Exclusive or non-exclusive basis

Types of Licences

Sub-Licensing

A licensee may grant sub-licences only if the licence agreement expressly permits it. Without such authorisation, sub-licensing is not allowed.

Recording a Licence with EUIPO

Recording a licence is optional but recommended. Benefits of recording:

• The licensee can invoke the rights of the EUTM owner in infringement proceedings (Article 25(3) EUTMR)
• Recorded licences are opposable to third parties
• Provides public notice of the licensing arrangement

To record, submit:

• A request for recording (online or paper)
• Evidence of the licence (the agreement or an extract)
• Recording fee: EUR 200 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 EUIPO to be effective against third parties.

Insolvency Proceedings

Under Article 23 EUTMR, an EUTM may be involved in insolvency proceedings. The insolvency practitioner or court can request that EUIPO note the insolvency on the Register.

Levy of Execution

Under Article 24 EUTMR, an EUTM can be subject to a levy of execution (court-ordered seizure). This must also be recorded with EUIPO.

Required Documentation

For all transactions, EUIPO requires:

Partial Assignment: Key Considerations

Partial assignments create a split registration — the original EUTM continues for the retained goods/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/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 their portion of the original registration

EUIPO may refuse to record a partial assignment if the split would create a likelihood of confusion or deception (Article 20(2) EUTMR).

Cross-Border Considerations

Since the EUTM has unitary character across the EU:

• Territorial restrictions in assignment are not possible — you cannot assign an EUTM for "Germany only"
• Territorial restrictions in licensing are possible — you can license for specific member states
• If you need territory-specific ownership, consider national trademark filings instead
• For assignments involving non-EU parties, the EU representative requirement applies to the new owner

Tax and Due Diligence Considerations

While outside the scope of trademark law, be aware that EUTM assignments and licences may trigger:

• VAT obligations — particularly for cross-border licensing arrangements
• Withholding tax — on royalty payments between countries
• Transfer pricing requirements — for intra-group assignments or licences
• Due diligence needs — verify the mark is free from encumbrances, oppositions, or cancellation actions before acquiring it

Always consult with tax and legal advisors in the relevant jurisdictions.

Best Practices

1. Record all transactions with EUIPO — unrecorded transfers are not enforceable against third parties
2. Include quality control provisions in licence agreements — maintaining control over how the mark is used protects its distinctiveness
3. Address termination — specify what happens to inventory, signage, and digital assets when a licence ends
4. Check for encumbrances before acquiring an EUTM — use eSearch plus to review the mark's history
5. Update renewal responsibility — clarify who is responsible for renewal fees after assignment
6. Consider monitoring obligations — determine which party is responsible for watching and enforcing the mark

Ready to Transfer or License Your EU Trademark?

Whether you are buying, selling, or licensing an EUTM, proper documentation and EUIPO recording are essential for protecting your rights.

👉 Check your trademark's status before entering into any transaction, or contact our assignment and transfer team for end-to-end support.