CMS Expert Guide to transferring IP rights

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.

A trademark can be transferred by contract or by law (Sec. 27 (1) of the German Trademark Act (“Markengesetz”, “MarkenG”). 

Recording the transfer is not required for the assignment to become effective but is recommended.

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 as well as the company’s national identification number, if available), 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.

The request should be filed using the application form issued by the German Patent and Trademark Office (“DPMA”). However, the Office will also accept requests in any other written form. The following requirements need to be met:

1. The request is signed by the registered owner and the new owner; or
2. The request is only signed by the new owner and
   1. accompanied by a declaration signed by the registered owner that he consents to the registration of the assignment; or
   2. accompanied by supporting documents evidencing the assignment, such as a transfer agreement or a declaration of transfer, or a certificate of inheritance. 

Copies are sufficient.

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.

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.

Recording the assignment in the trademark register has only declarative effect.

However, in proceedings before the German trademark office (DPMA) and the Federal Patent Court, the new owner may only assert rights based on the trademark if the office has received an application for registration of the assignment. 

Moreover, there is a legal assumption that the trademark is owned by the person entered in the register as proprietor. However, this assumption can be rebutted. Also, the assumption rule does not mean that a bona fide acquisition of the trademark from a person entered in the register who is not in fact the proprietor of the trademark is possible. 

No, but all proprietors must consent to the transfer.

All parties must agree on the assignment of the trademark.

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.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.

A so-called trademark division, where the transfer takes place for only part of the goods or services for which it is registered, is possible.  These must not overlap with the goods or services remaining in the original trademark or with those of any previous divisions. 

A territorial division of the trademark (e.g. by federal states) or a division and separate transfer of individual trademark components (e.g. verbal and figurative components) is not permitted. 

Registered trademarks can only be divided after the opposition period has expired.

The request for registration of a partial assignment should be filed by using the application form issued by the German Patent and Trademark Office. 

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

There is no fee for recording a trademark assignment.

The transfer of a trademark to a legal successor is generally free of charge if the trademark is transferred in its entirety. However, if only a partial transfer is to be made, i.e. the trademark is to be transferred only for certain goods or services, a fee of EUR 300 is due.

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-à-vis third parties, the licence rights only become effective when recorded in the register.

In general, a trademark can be the subject of exclusive or non-exclusive licences for all or part of the goods or services for which it is registered and for all or part of Germany. The Licensee may grant sub-licences himself, provided he is authorised to do so by the Licensor, and his own licence covers the scope of the sub-licence granted.

A trademark license may be recorded upon request. However, registration is not required for the licence to be valid.

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.  

The request for registration of a licence can be filed by either the trademark proprietor or the licensee with the written consent of the respective other party. The application form provided by the German Patent and Trademark Office should be used.

Copies are sufficient.

There are no legalization/notarization requirements. A request to register a trademark licence that relates to a Union trademarkapplication 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.

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.

No substantive consequences are associated with the registration of the licence. The registration is for information purposes only.

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.

The trademark can be licenced for all or part of the goods or services for which it is registered and for the whole or part of Germany unlike the assignment of a trademark. 

However, there are no specific formalities in case a trademark is only partially licenced. The limited scope, however, must be indicated in the application form.

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.

The fee for the recording of the licence in the register is EUR 50. 

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. 

Yes, trademarks can be pledged. It is not required to record the pledge in the trademark register. 

However, the registration has relevance insofar as cancellation of the trademark as a result of surrender can only take place with the consent of the registered lien holder.