Trademark assignment agreement

A trade mark is a key asset in a company’s commercial strategy. It identifies its goods or services, distinguishes it from competitors and builds customer loyalty. As an intellectual property right, it can be transferred, notably by assignment.

The trade mark assignment contract is the act by which the owner of a mark transfers all or part of its rights to an assignee. It may cover one or several marks, applied for or registered. The assignment may be for consideration or free of charge. It is, however, subject to strict conditions laid down by the French Intellectual Property Code and by EU law.

Legal nature of the assignment

A trade mark assignment is a contract transferring ownership. It thus differs from a licence, which grants only a temporary right of use without transferring the title. In an assignment, the assignor transfers to the assignee all the economic rights attached to the mark, and the assignee becomes its new owner.

A trade mark may be assigned independently of the business, unlike other elements of the going concern. The assignment may be total, for all designated goods or services, or partial, limited to certain goods, services or territories.

Conditions of validity

1. The assignment must be recorded in writing, on pain of nullity, under Article L. 714-1 of the French Intellectual Property Code.
2. It must precisely identify the assigned marks, with their registration number, owner and scope.
3. It must state the price or specify that the assignment is free of charge.

Recording the assignment

Recording makes the assignment enforceable against third parties. It is done before the INPI or, for an EU trade mark, before the EUIPO, with a specific form, the deed of assignment and proof of payment of the fee. Without recordal, the assignment cannot be relied on against third parties: a licensee, an agent or a competitor may continue to treat the former owner as the sole holder of the rights, notably in infringement proceedings.

EU framework and limits

Under EU law, a trade mark assignment is lawful as long as it does not serve to partition the internal market. The owner cannot use its exclusive right to prevent parallel imports within the Union, and an assignment coupled with overly strict territorial exclusivity or price-fixing may fall foul of Article 101 TFEU.

Effects of the assignment

Once concluded and recorded, the assignment makes the assignee the new owner of the mark, with all attached rights: exploiting the mark directly, granting licences, suing for infringement and assigning the mark in turn.

The trade mark assignment contract is thus an act of real strategic significance. It transfers a title and its attached rights, subject to rigorous formalities and recordal before the INPI or the competent office. Compliance with competition law, clear drafting and recordal secure the transfer and limit the risk of disputes with third parties.