EU trade mark assignment is a change of proprietor of a registered sign recorded in the EUIPO register. Unlike licensing — where the proprietor remains the same and another person acquires only the right to use the mark — an assignment involves a full transfer of proprietorship.
The basic requirements for EUTM assignment are set out in Article 20 of Regulation (EU) 2017/1001, in particular the rules on written form, partial assignment, and recordal of the change of proprietor. In matters of ownership not specifically regulated by Articles 20–28 EUTMR, the rules of the applicable national law determined pursuant to Article 19 EUTMR apply.
An EU trade mark may be sold or contributed as a non-cash contribution to a company's share capital — both scenarios involve a change of proprietor. A mark may also be the subject of a security right or other right in rem — in that case the proprietor does not change, so this is not an "assignment" in the same sense.
Two Forms of Change of Proprietor — and Security Rights Separately
Sale is the straightforward case: the proprietor transfers rights to a new proprietor under a contract. The assignment may be complete (covering all goods and services of the registration) or partial — where only part of the goods or services for which the mark is registered pass to the new proprietor. The specification is defined in accordance with the Nice Classification, but the assignment itself is linked not to the classes as such but to the specific goods or services within them.
Contribution to share capital is in substance also a transfer of ownership — the mark passes from the founder to the company. The specific legal basis and the documents by which such a contribution is formalised depend on the applicable national corporate law. For EUIPO, the transaction is processed as a standard change of proprietor, provided adequate evidence of the transfer of rights is submitted.
Security rights stand apart. Ownership of the mark does not pass — it remains collateral for an obligation, a right in rem under Article 22 EUTMR. To make the security right opposable to third parties, it should be recorded in the EUIPO register at the request of one of the parties.
Written Form — and What EUIPO Actually Requires
A contractual assignment requires a written document signed by both parties; the written form requirement under Article 20(3) does not apply where the assignment results from a court order.
An exchange of letters or agreement on terms in correspondence is not sufficient where the documents do not confirm compliance with the written form requirement and signatures of both parties. In practice, however, EUIPO does not always require submission of the full contract text: where the recordal request is filed by the new proprietor together with a declaration signed by the former proprietor consenting to the recordal, that is sufficient — no further evidence is required.
Why the Register Entry Matters for Both Parties
The mere fact of signing a contract does not make the new proprietor protected against third parties. Article 27(1) EUTMR provides that acts under Articles 20, 22, and 25 have effect against third parties in all member states only after entry in the EUIPO register. Before recordal, such an act may nonetheless have effect against a third party who, at the time of acquiring their rights, was aware of the prior transfer.
A recordal request should be filed immediately after the transfer has been formalised — not deferred.
Before the new proprietor is entered in the register, there are limitations on the ability to rely on the assignment against third parties and before EUIPO. In particular, the Office continues to refer to register data when sending official communications — the new proprietor will not receive EUIPO communications addressed to them in the relevant proceedings, for example in inter partes procedures.
Once a recordal request has been filed, however, the transferee may already perform certain procedural acts to meet deadlines before the Office, even before the entry has been completed. This is the key distinction: the transfer of rights has already taken place between the parties, but EUIPO has not yet recorded it in the register — and these are different things with different legal consequences.
The same principle applies to the sale of a business as a whole — as a general rule, a trade mark passes automatically with the undertaking unless the law governing the transaction or the circumstances expressly indicate otherwise.
Step-by-Step Procedure for Filing a Recordal Request
- Check the EUIPO register before signing the contract — for security rights, licences, and pending proceedings.
- Conclude a written contract signed by both parties — the assignor (or donor) and the assignee.
- File the recordal request (Form Mod.008). It may be filed by the former proprietor, the new proprietor, or both parties jointly; the full contract text is not always required — a declaration signed by the former proprietor is often sufficient. For a partial assignment, the request additionally includes the specific goods or services, not the Nice classes as such.
- Payment: no fee is charged for recording a full assignment of an EU trade mark.
- Entry in the EUIPO register — the point from which the assignment generally becomes effective against third parties; publication in the Bulletin follows as a separate step.
Articles 19–27 EUTMR also apply to EUTM applications pursuant to Article 28 — a transfer of rights is possible at the application stage, before registration is completed.
Who May File the Request
The recordal request may be filed by the former proprietor, the new proprietor, or both parties jointly. Where the transfer occurs by virtue of a court order or universal succession — for example, a company merger — the former proprietor cannot physically sign the request. In such cases the request is accompanied by documents evidencing the merger or succession, such as an extract from the commercial register.
How Much Does an EUTM Change of Proprietor Cost?
No fee is charged for recording a full assignment of an EU trade mark. This distinguishes the procedure from, for example, the division of an application, which remains subject to a fee.
Security Rights and Contribution of an EUTM to Share Capital
Before establishing a security right, existing recorded licences on the EU trade mark and other rights over the mark should be verified: they may affect the economic value of the asset and the creditor's position.
A discrepancy between what is recorded in the company's constitutional documents when the mark is contributed to share capital and what is entered in the EUIPO register may create uncertainty as to the ownership of the right and complicate future transactions involving the mark if the procedure is only partially completed.
A partial assignment cannot be territorial: an EUTM cannot be assigned to one person "for Germany" and to another "for France." Partiality relates only to goods or services — the unitary character of the mark across the entire EU territory is preserved.
Common Mistakes
One of the most common mistakes is assuming that a verbal agreement or an exchange of letters is sufficient as long as the relationship between the parties is amicable.
Another typical situation: the contract has been signed, but the recordal request is deferred on the assumption that it can be dealt with "later." Until the entry is made, the new proprietor will not receive EUIPO communications addressed to them in the relevant proceedings — including in opposition window.
In partial assignments, the parties fail to specify with sufficient precision the list of goods or servicespassing to the new proprietor. This creates uncertainty as to the scope of the rights transferred and may lead to a dispute between the parties or to deficiencies in the recordal request.
Failing to carry out a preliminary check of the mark before the transaction is another source of risk: an EU trade mark as a business asset carries legal risks not visible from the registration certificate itself — security rights in favour of third parties, disputes over genuine use, discrepancies between the company's constitutional documents and the register data.
Before signing an assignment agreement, check the EUIPO register for security rights, licences, and pending proceedings relating to the mark. File the recordal request immediately after the transfer has been formalised: until the entry is made in the register, the assignment generally cannot be relied upon against third parties who were unaware of it.
