Transfer of IP rights in the Netherlands

  1. Patents: Assignment
    1. 1. How may a patent be assigned (by law and/or transaction) and is it required to record the assignment in the national patent register to become effective? 
    2. 2. Which formalities must be met to record a patent assignment? Which supporting documents are required?
    3. 3. What are the legal consequences of not recording the patent assignment? Does the record in the patent register have declarative or constitutive effect?
    4. 4. Are there specific formalities in case the patent is held by more than one proprietor? 
    5. 5. Is there a need to appoint a domestic professional representative?
    6. 6. Which official fees (if any) arise from recording a patent assignment?
  2. Patents: Licensing
    1. 7. Which forms of licensing patents exist and which ones must be recorded in the patent register to become effective (if any)? 
    2. 8. Which formalities must be met to record a patent licence? Which supporting documents are required?
    3. 9. What are the legal consequences of not recording the patent licence? Does the record in the patent register have declarative or constitutive effect?
    4. 10. Is there a need to appoint a domestic professional representative?
    5. 11. Which official fees (if any) arise from recording a patent licence?
  3. Patents: Pledge
    1. 12. It is possible to pledge a patent? If yes, is it required to record such pledge in the patent register?
  4. Trademarks: Assignment
    1. 1. How may a trademark be assigned (by law and/or transaction) and is it required to record the assignment in the national trademark register to become effective? 
    2. 2. Which formalities must be met to record a trademark assignment? Which supporting documents are required?
    3. 3. What are the legal consequences of not recording the trademark assignment? Does the record in the trademark register have declarative or constitutive effect?
    4. 4. Are there specific formalities in case the trademark is held by more than one proprietor? 
    5. 5. Are there specific formalities in case a trademark is only partially assigned? 
    6. 6. Is there a need to appoint a domestic professional representative?
    7. 7. Which official fees (if any) arise from recording a trademark assignment?
  5. Trademark: Licensing
    1. 8. Which forms of licensing trademarks exist and which ones must be recorded in the trademark register to become effective (if any)? 
    2. 9. Which formalities must be met to record a trademark licence? Which supporting documents are required?
    3. 10. What are the legal consequences of not recording the trademark licence? Does the record in the trademark register have declarative or constitutive effect? 
    4. 11. Are there specific formalities in case a trademark is only partially licenced? 
    5. 12. Is there a need to appoint a domestic professional representative?
    6. 13. Which official fees (if any) arise from recording a trademark license?
  6. Trademark: Pledge
    1. 14. It is possible to pledge a trademark? If yes, is it required to record such pledge in the trademark register?

Patents: Assignment

1. How may a patent be assigned (by law and/or transaction) and is it required to record the assignment in the national patent register to become effective? 

The Dutch the Patent Act (Rijksoctrooiwet 1995 “ROW 1995”), states that a patent may be assigned “by means of a deed containing a declaration by the patent holder that he assigns the patent or the rights arising from the patent application to the assignee and a declaration by the assignee that he accepts the assignment” (Art. 65(1) ROW 1995).
The registration is not a constitutive requirement for the validity of the assignment but only after the entry has been made concerning the deed in the patent register, the assignment shall take effect towards third parties (Art. 65(3) ROW 1995).

2. Which formalities must be met to record a patent assignment? Which supporting documents are required?

To record a patent assignment, the following formalities must be met: 

  • a written request for registration of a change in the applicant or holder of a patent;
  • the numbers of the patent applications and/or patents; 
  • the full name and address details of the applicant or patent holder, which need to align with the details in the patent register (or, when a patent request has not yet been recorded in the national register, with the details as provided to the Office);
  • the full name and full address details of the acquiring party; 
  • the request must be signed by the applicant and their lawyer/patent attorney.

Moreover, the following supporting documents are required:

  • either an original deed of delivery:
  • this must contain a declaration by the patent holder that he assigns the patent or the rights arising from the patent application to the assignee and a declaration by the assignee that he accepts the assignment (Art. 65(1) ROW 1995);
  • the signatures of the transferor and acquirer must be original (not a stamp or copy);
  • if the parties are legal persons, the deed preferably also states the position of the signatories;
  • the deed preferably also states the place and date of signature;
  • or a notarized copy of the original deed (in which any confidential passages may be covered).
2.1 Are original supporting documents essential or are copies sufficient?

To record the assignment in the national patent register, the ROW 1995 requires either the original or a certified copy of the document containing the deed of transfer of title by the proprietor and declaration of acceptance by assignee (Art. 64 and 65 ROW 1995). 

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

According to Art. 12 Implementation Decree ROW 1995 (Uitvoeringsbesluit ROW 1995) a translation can be asked when the provided documents are not in Dutch or English. 

2.3 Is there a must to use a specific form?

No specific form is required.

When a patent assignment is not recorded in a patent register, the assignment does not have any effect towards third parties since Article 65(3) ROW 1995 requires registration for this. 

Nevertheless, the effect towards third parties can also be established when the acquirer has demonstrated its rights of the patent through other means. This means that not recording a patent in a register will not necessarily lead to a situation where the assignment does not have any rights towards third parties when the third party has been made aware of the assignment in another manner.

Recording the assignment of the patent in the patent register has a declarative effect.

4. Are there specific formalities in case the patent is held by more than one proprietor? 

According to Article 66(1) of ROW 1995 “If various persons are jointly entitled to the patent, their mutual relationship shall be governed by an agreement made between them”.

Where no such agreement has been entered into, Article 66(2) ROW states that each co-owner can act without consent of the other co-owner(s) to take (legal) action to enforce the patent and to prevent someone else from using the invention for commercial purposes. However, a licence or consent may be granted only with the joint consent of the persons entitled to the patent. 

Regarding the payment of the fee, Art 66(3) holds that the persons entitled to the patent shall be jointly and severally liable.

5. Is there a need to appoint a domestic professional representative?

No, there is no requirement to appoint a domestic professional representative.

6. Which official fees (if any) arise from recording a patent assignment?

According to Art. 64(2) ROW 1995, a fee shall be due to register the assignment in the patent register. The Implementation Decree ROW 1995 states in Art. 8(2), that the fee is set at 27 EUR.

Patents: Licensing

7. Which forms of licensing patents exist and which ones must be recorded in the patent register to become effective (if any)? 

A license can be created “by an agreement, by an accepted testamentary disposition or, by a decision rendered by Our Minister or by a court decision that has become final and has acquired the force of res judicata” (Art. 56(2) ROW 1995). 
Both a license created by an agreement and a license created by an accepted testamentary disposition shall only have effect towards third parties after they have been recorded in the patent register (Art. 56(2) ROW 1995).

8. Which formalities must be met to record a patent licence? Which supporting documents are required?

To record a patent license, the following formalities must be met:

  • a written request for registration of a license;
  • the numbers of the patent applications and/or patents;
  • the full name and full address details of the licensor;
  • the full name and full address details of the licensee;
  • an indication of whether it concerns an exclusive or non-exclusive license;
  • the request must be signed by the applicant and his patent attorney/lawyer.

Moreover, the following supporting documents are required:

  • either the original license agreement:
  • with original signatures of the licensor and the licensee;
  • preferably including the place and date of signature;
  • when the parties are legal persons, the agreement preferably specifies the position of the signatories;
  • or a notarized copy of that license agreement (in which any confidential passages may be covered);
  • or a notarized extract of the agreement which state the licensed rights and the scope of these rights.
8.1 Are original supporting documents essential or are copies sufficient?

According to Art. 56(2) ROW 1995, an original or a certified copy of the license agreement, or an accepted testamentary disposition is required

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

A translation can be asked when the provided documents are not in Dutch or English (Art. 14a(1) Implementation Decree ROW 1995).

8.3 Is there a must to use a specific form?

No specific form is required.

Only when a patent license is recorded, it has effect towards third parties (Art. 56(2) ROW 1995).

Recording the patent license in the patent register has a declarative effect.

10. Is there a need to appoint a domestic professional representative?

No, it is not required to appoint a domestic professional representative.

11. Which official fees (if any) arise from recording a patent licence?

According to Art. 56(2) ROW 1995, a fee shall be due for the entry. The Implementation Decree ROW 1995 states in Art. 8(2), that the fee, in 2021, is set at 27 EUR.

Patents: Pledge

12. It is possible to pledge a patent? If yes, is it required to record such pledge in the patent register?

It is not required to record such pledge, as it is established by a deed. However, it shall only be effective against third parties after it has been entered into the patent register (Art. 67(1) ROW 1995). 

Moreover, article 67(3) ROW 1995 states that “Stipulations in the deed of pledge concerning licences to be granted after registration shall take effect, also towards third parties, from their date of their entry in the patent register. Stipulations concerning fees for licences granted prior to registration shall take effect towards the licensee after he has been served with a bailiff’s writ.”

Trademarks: Assignment

1. How may a trademark be assigned (by law and/or transaction) and is it required to record the assignment in the national trademark register to become effective? 

Note: The Netherlands, Belgium and Luxembourg have applied uniform rules for the protection of trademarks: The Benelux Convention on Intellectual property (“BCIP”). The Benelux Office for Intellectual Property (“BOIP”) is the official  body for trademarks and designs registration in the Benelux.

According to article 2.31 BCIP a trademark may be transferred, separately from any transfer of the undertaking, in respect of some or all the goods or services for which it is registered. 

Following article 2.31 (2) (a) BCIP the transfer of the trademark between living persons should be laid down in writing.

Article 2.33 BCIP states that the assignment shall become opposable against third parties only after recordal of an extract from the document establishing this or a corresponding declaration signed by the parties involved in the manner specified by the implementing regulations and following payment of the fees due. 
However, it is not required to record the assignment in the national trademark register to become effective, as the exclusive right in a trademark under the BCIP shall be acquired by registration of the trademark that has been filed in Benelux territory (Benelux trademark) following article 2.2 BCIP.  

2. Which formalities must be met to record a trademark assignment? Which supporting documents are required?

To record a trademark assignment the following supporting documents are required: An extract of the deed showing the transfer (a purchase contract, deed of divorce and division, deed of contribution, judgement) or a statement pertaining to the transfer signed by both parties. 

Following article 2.31 (2) (a) BCIP the transfer of the trademark between living persons has to be laid down in writing.

2.1 Are original supporting documents essential or are copies sufficient? 

Rule 3.1(4) of the Implementing Regulations under the Benelux Convention on Intellectual Property (trademarks and designs) (“Implementing Regulations”) prescribes that submission of a copy of the deed evidencing assignment will suffice. 

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

According to rule 3.1(1) of the Implementing Regulations a request asking for modification of entries in the register concerning a Benelux filing or registration be changed has to be addressed to BOIP containing the registration number, the name and address of the holder of the right, the holder’s signature, the signature of its representative, and in relevant cases, the representative’s name and address or the correspondence address. In relevant case, the request should be accompanied by documentary evidence. 

Translation requirements: According to rule 3.3(1) of the Implementing Regulations the working languages of the BOIP are Dutch, French and English. Rule 3.3(3) prescribes that documents evidencing a transfer will also be accepted if they have been drawn up in German. 

2.3 Is there a must to use a specific form?

Following Rule 3.4 of the Implementing Regulations the documents, documentary evidences and enclosures that are to be submitted to BOIP may be submitted using means, electronic or otherwise, stipulated by the Director General. The Director General has issued a document on Submission of supporting documents and means of evidence. As of 1 January 2021 the following conditions apply to supporting documents and means of proof:

  • all pieces must be included in a bundle of documents;
  • the bundle of documents must have a table of contents containing at least: (i) the number under which each Piece can be found in the bundle of documents; (ii) A brief description of each Piece included in it; (iii) A description of the facts that each Piece proves;
  • where appropriate the basic document must refer to the Piece in the bundle of documents which relates to the passage in question by indicating the number of the Piece in said bundle;
  • where appropriate, where passages relevant to the evidence to be provided are part of larger Pieces, which are otherwise irrelevant (such as advertisement in a periodical), these relevant passages should be highlighted or otherwise precisely indicated;
  • BOIP urges that bundles of documents should be limited in size. BOIP strongly recommends observing a maximum of 110 pages. 

Not recording the trademark assignment leads to the legal consequence that the assignee cannot oppose this transfer against third parties (article 2.33 BCIP). 

Transfer of the trademark right does not automatically imply the transfer of rights that may be associated with the trademark right. 

The record in the trademark register has a declarative effect, as the recordal of an extract from the document establishing the transfer or a corresponding declaration signed by the parties involved in the manner makes the transaction opposable against third parties. 

4. Are there specific formalities in case the trademark is held by more than one proprietor? 

The BCIP does not regulate the circumstances that the trademark is held by more than one proprietor. But it may be assumed that a trademark can be held by more than one proprietor. The specific formalities that are applicable in case the trademark is held by more than one proprietor, are regulated according to national law.

5. Are there specific formalities in case a trademark is only partially assigned? 

A partial assignment is the assignment of trademarks pertaining only to certain goods and services. A business having multiple goods and services can choose to assign only a certain product or service and retain the rest. This also follows from article 2.31 BCIP where a trademark may be transferred in respect of some of the goods or services for which it is registered. 
As opposed to licensing, the assignment of a trademark must always concern the entire Benelux territory. 

6. Is there a need to appoint a domestic professional representative?

There is no need to appoint a domestic professional representative, as this is not stated by the BCIP.

7. Which official fees (if any) arise from recording a trademark assignment?

The fees for transfer of a trademark for the year 2020:

  • transfer of the first right: €56;
  • transfer of the second to fifth right: €28;
  • transfer of every additional right: free. 

Trademark: Licensing

8. Which forms of licensing trademarks exist and which ones must be recorded in the trademark register to become effective (if any)? 

According to article 2.32 BCIP a trademark may be licensed for some or all the goods of services for which it is registered and for the whole or part of the Benelux territory. A license may be exclusive or non-exclusive. 

  • The holder of a non-exclusive license may not bring proceedings for infringement of a trademark without the consent of the proprietor of the trademark unless otherwise stipulated in the licensing contract;
  • The holder of an exclusive license may bring such proceeding even without the consent of the proprietor of the trademark and irrespective of the contractual provisions if the proprietor of the trademark, after having been given notice to do so, does not himself bring infringement proceedings within an appropriate period. 

For trademark licensing there are no formal requirements, but the license shall become opposable against third parties only after filing of an extract from the document establishing this or a corresponding declaration signed by the parties involved has been registered. 

9. Which formalities must be met to record a trademark licence? Which supporting documents are required?

According to article 2.33 BCIP a license must be registered in the manner specified by the implementing regulations and the following payments of the fees due. 

9.1 Are original supporting documents essential or are copies sufficient? 

Rule 3.1(4) of the Implementing Regulations prescribes that submission of a copy of the deed evidencing a license will suffice. 

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

According to rule 3.1(1) of the Implementing Regulations a request asking for modification of entries in the register concerning a Benelux filing or registration be changed should be addressed to BOIP containing the registration number, the name and address of the holder of the right, the holder’s signature, the signature of its representative, and in relevant cases, the representative’s name and address or the correspondence address. In relevant case, the request should be accompanied by documentary evidence.  

Translation requirements: According to rule 3.3(1) of the Implementing Regulations the working languages of the BOIP are Dutch, French and English. Rule 3.3(3) prescribes that documents evidencing a licence will also be accepted if they have been drawn up in German. According to Rule 3.3(4) the documents referred to in paragraph 3 that have been drawn up in another language will also be accepted if a translation thereof in one of the working language of the Office (or German) is submitted together with the documents. 

9.3 Is there a must to use a specific form?

Following Rule 3.4 of the Implementing Regulations the documents, documentary evidences and enclosures that are to be submitted to BOIP or the national administrations may be submitted using means, electronic or otherwise, stipulated by the Director General.  The Director General has issued a document on Submission of supporting documents and means of evidence. As of 1 January 2021 the following conditions apply to supporting documents and means of proof:

  • all pieces must be included in a bundle of documents;
  • the bundle of documents must have a table of contents containing at least: (i) the number under which each Piece can be found in the bundle of documents; (ii) A brief description of each Piece included in it; (iii) A description of the facts that each Piece proves;
  • where appropriate the basic document must refer to the Piece in the bundle of documents which relates to the passage in question by indicating the number of the Piece in said bundle;
  • where appropriate, where passages relevant to the evidence to be provided are part of larger Pieces, which are otherwise irrelevant (such as advertisement in a periodical), these relevant passages should be highlighted or otherwise precisely indicated;
  • BOIP urges that bundles of documents should be limited in size. BOIP strongly recommends observing a maximum of 110 pages.

Note: This is the same as for trademark assignment.

In such a case, the trademark license does not have any effect against third parties without registration (article 2.33 BCIP). 
The record in the trademark register has declarative effect, as it becomes effective against third parties after registration. 

11. Are there specific formalities in case a trademark is only partially licenced? 

A trademark may be the subject of a license for all or some of the goods or services in respect of which it was filed or registered. (2.23(1) BCIP).

The trademark can be licensed for all or part of the Benelux.  

12. Is there a need to appoint a domestic professional representative?

There is no need to appoint a domestic professional representative.

13. Which official fees (if any) arise from recording a trademark license?

The fees for license of a trademark for the year 2020:

  • the first right: €56;
  • the second to fifth right: €28;
  • every additional right: free. 

Trademark: Pledge

14. It is possible to pledge a trademark? If yes, is it required to record such pledge in the trademark register?

Yes, it is possible to pledge a trademark. According to article 2.32bis (1) BCIP a trademark may, independently of the undertaking, be given as a security or be the subject of rights in rem. 

The registration of the deed of pledge is not necessary for the validation of the pledge. However, registration provides for third-party effect following from article 2.33 BCIP the assignment or other transfer or the license shall become opposable against third parties only after recordal of an extract from the document establishing this or a corresponding declaration signed by the parties involved in the manner specified by the implementing regulations and following payment of the fees due. The provision in in the preceding sentence shall apply to the rights in rem. 

Portrait ofRogier Vrey
Rogier de Vrey
Partner
Amsterdam