Transfer of IP rights in the EU

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2.1 Are original supporting documents essential or are copies sufficient?

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2.2 Are there any legalization and/or notarization and/or translation requirements?

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2.3 Is there a must to use a specific form?

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8.1 Are original supporting documents essential or are copies sufficient?

N/A

8.2 Are there any legalization and/or notarization and/or translation requirements?

N/A

8.3 Is there a must to use a specific form?

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The trademark can be assigned by law or transaction, e.g. through inheritance or the merger of two companies. The successor in title may not invoke his rights under the registration of the trademark until the transfer has been recorded in the register, but registration is not necessary for the trademark assignment to become effective.

There are several ways to prove the transfer of the trademark, such as presenting a declaration that is signed by both parties or a  contract between the parties. Alternatively, it is sufficient if the application form is signed by both parties or their representatives. When the transfer is due to a merger or other universal succession, the application must be accompanied by supporting documents that prove the merger or universal succession, such as extracts from the trade register.

The application must contain the particulars of the Union trademark, the details of the new proprietor (e.g. name, address, nationality or the legal form of the entity), the goods and services to which the transfer relates, as well as documents establishing the transfer. The request may also contain, where appropriate, information identifying the representative of the new proprietor. 

2.1 Are original supporting documents essential or are copies sufficient? 

Copies are sufficient.

2.2 Are there any legalization and/or notarization and/or translation requirements?

There are no legalization/notarization requirements. The request to register the transfer of a Union trademark application must be filed in the first or second language of the Union trademark application. The request to register a transfer of a registered Union trademark must be filed in one of the five languages of the Office. Documents may be submitted in any official language of the European Union. This applies to documents submitted as proof of the transfer, such as the transfer form or deed, transfer agreement, extract from the Commercial Register, or declaration of consent to register the successor in title as new holder.

2.3 Is there a must to use a specific form?

There is no need to use a specific form.

The formal requirements for the validity of the transfer of a Union trademark apply irrespective of any national regulations that do not require a specific form for the transfer of trademarks.

If the transfer is not entered into the register, the successor in title may not invoke the rights conferred by the Union trademark. Moreover, the new proprietor will not receive any communications from the Office, in particular in inter partes proceedings, nor will he receive any communications concerning the period for renewal of the mark. Recording the transfer has declarative effect.

No, but all proprietors must consent to the transfer.

In the case of a partial transfer of rights, it must be ensured that the goods and services of the remaining registration and the new registration do not overlap. A separate file will be created for the new registration with a new registration number.

Persons or companies that are not domiciled in the EEA must appoint a representative.

There is no fee for recording a trademark assignment.

A trademark can be the subject of exclusive or non-exclusive licences.

The transfer of the licence right becomes effective when the contract is concluded between the parties. Vis-a-vis third parties, the licence rights only become effective when recorded in the register.

The request for registration may be filed by both parties or only by the licensee. Only, in the latter case a copy of the licence agreement or proof of the licensor's consent must be provided. Otherwise, no such proof is required.

A request to record a trademark licence must contain the particulars of the Union trademark, the licensee and the goods and services to which the licence relates, as well as documents establishing proof of the licence grant.  The requirement concerning proof of the licence grant does not apply if the request is made by the holder of the Union trademark.

9.1 Are original supporting documents essential or are copies sufficient? 

Copies are sufficient.

9.2 Are there any legalization and/or notarization and/or translation requirements?

There are no legalization/notarization requirements. A request to register a trademark licence that relates to a Union trademark application must be filed in the first or second language of the Union trademark application. A request that relates to a registered Union trademark must be filed in one of the five languages of the Office. Documents may be submitted in any official language of the European Union. 

9.3 Is there a must to use a specific form?

There is no need to use a specific form.

The trademark licence does not become effective against third parties. Recording the licence has declarative effect.

Where registration of a licence is requested for only some of the goods or services, the goods or services for which the licence has been granted must be indicated.

Where registration of the licence for a limited territory is requested, the respective part of the European Union must be indicated. Such a part of the European Union may be one or more Member States or one or more administrative regions within a Member State.

Persons or companies that are not domiciled in the EEA must appoint a representative.

EUR 200 per registration, but where multiple requests are submitted in the same application or at the same time, this total is not to exceed EUR 1,000.

Yes, a Union trademark can be pledged independently of the company to which it relates. It is not mandatory to record a pledge in the trademark register, but it is recommended.