Article 20

Print this page

1. An EU trade mark may be transferred, separately from any transfer of the undertaking, in respect of some or all of the goods or services for which it is registered.

2. A transfer of the whole of the undertaking shall include the transfer of the EU trade mark except where, in accordance with the law governing the transfer, there is agreement to the contrary or circumstances clearly dictate otherwise. This provision shall apply to the contractual obligation to transfer the undertaking.

3. Without prejudice to paragraph 2, an assignment of the EU trade mark shall be made in writing and shall require the signature of the parties to the contract, except when it is a result of a judgment; otherwise it shall be void.

4. On request of one of the parties a transfer shall be entered in the Register and published.

5. An application for registration of a transfer shall contain information to identify the EU trade mark, the new proprietor, the goods and services to which the transfer relates, as well as documents duly establishing the transfer in accordance with paragraphs 2 and 3. The application may further contain, where applicable, information to identify the representative of the new proprietor.

6. The Commission shall adopt implementing acts specifying:
(a) the details to be contained in the application for registration of a transfer;
(b) the kind of documentation required to establish a transfer, taking account of the agreements given by the registered proprietor and the successor in title;
(c) the details of how to process applications for partial transfers, ensuring that the goods and services in the remaining registration and the new registration do not overlap and that a separate file, including a new registration number, is established for the new registration.
Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 207(2).
7. Where the conditions applicable to the registration of a transfer, as laid down in paragraphs 1, 2 and 3, or in the implementing acts referred to in paragraph 6, are not fulfilled, the Office shall notify the applicant of the deficiencies. If the deficiencies are not remedied within a period to be specified by the Office, it shall reject the application for registration of the transfer.

8. A single application for registration of a transfer may be submitted for two or more trade marks, provided that the registered proprietor and the successor in title are the same in each case.

9. Paragraphs 5 to 8 shall also apply to applications for EU trade marks.

10. In the case of a partial transfer, any application made by the original proprietor pending with regard to the original registration shall be deemed to be pending with regard to the remaining registration and the new registration. Where such application is subject to the payment of fees and those fees have been paid by the original proprietor, the new proprietor shall not be liable to pay any additional fees with regard to such application.

11. As long as the transfer has not been entered in the Register, the successor in title may not invoke the rights arising from the registration of the EU trade mark.

12. Where there are time limits to be observed vis-à-vis the Office, the successor in title may make the corresponding statements to the Office once the request for registration of the transfer has been received by the Office.

13. All documents which require notification to the proprietor of the EU trade mark in accordance with Article 98 shall be addressed to the person registered as proprietor.