What is a deed of transfer of trademark rights? Explanation and use

What is a deed of transfer of trademark rights? It is the written agreement by which the owner of a trademark (Benelux or EU trademark) transfers that trademark to another party. The deed records which trademark, which classes of goods and services, and which rights are transferred, at what price, and as of what date. Without such a recording, the transfer is not legally complete: only after registration with the trademark office (BOIP for Benelux, EUIPO for the EU trademark) can the new owner invoke the trademark against third parties.

The short answer

• What: Written deed regulating the transfer of a registered trademark.
• Who: transferor (current trademark holder) and transferee (new trademark holder).
• Form: in writing required — oral transmission is void.
• Registration: enter in the register of BOIP or EUIPO.
• Scope: can be full or partial (certain classes or areas).
• Difference compared to a license: with a transfer, the owner changes; with a license, the trademark holder remains the owner.

What exactly is a deed of transfer of trademark rights?

A trademark is an patrimonial right: you can sell it, donate it, or contribute it to a private limited company, just like a machine or a property. The deed of transfer is the document that legally records this change of ownership. For the Benelux trademark, the transfer is set out in the Benelux Treaty on Intellectual Property (BVIE), and for the EU trademark in the EU Trademark Regulation (Regulation (EU) 2017/1001).

Trademark law imposes one strict formal requirement: the transfer must be in writing and signed by both parties. A verbal agreement or merely an invoice is insufficient. In the absence of a valid deed, the transfer is void and the trademark formally remains the property of the original holder.

What belongs in the deed?

A usable deed of transfer of trademark rights contains at least:

• Parties: transferor and transferee, with Chamber of Commerce number or address details.
• The trademark: name, registration number and the office (BOIP or EUIPO).
• Scope: all classes or a selection (partial transfer).
• Price and goodwill: the remuneration and/or goodwill is included.
• Date of transfer: the date on which the trademark is transferred.
• Guarantees: that the trademark exists, is valid and free from seizure or licenses.
• Cooperation in registration: obligation to arrange the entry with BOIP/EUIPO.

Registration with BOIP or EUIPO

The deed makes the transfer valid between the parties, but against third parties, it is the registration that counts. As long as the transfer has not been recorded in the register, the new owner cannot, for example, use the trademark against an infringer and runs the risk that a later acquirer who does register in a timely manner takes precedence.

For a Benelux trademark, you file the amendment with the BOIP; for a Union trademark, with the EUIPO. Both offices require a copy of the deed or a signed transfer form. The costs for registration are limited (usually a few tens of euros per trademark), but delaying it poses the real risk.

Full and partial transfer

A trademark is registered for specific classes of goods and services (the Nice classification). You can transfer the trademark in full, but also partially:

• By class: for example, transfer the brand for clothing (class 25) and keep it for hospitality (class 43) yourself.
• Territorial: in the case of a Union trademark, the mark is in principle transferred throughout the entire EU; splitting by country is not possible without converting the mark into national rights.

In the case of a partial transfer, be aware of the risk of confusion: if two parties start using a very similar mark in related classes, this can lead to conflicts. In such cases, establish clear agreements regarding usage.

Value and goodwill

The price of a trademark depends on its notoriety, associated revenue, the strength of the protection, and the remaining term (a trademark is valid for ten years and is renewable each time). Often, goodwill is transferred alongside the bare trademark right: the built-up reputation and customer value. Explicitly state in the deed whether goodwill is included — this has tax implications and prevents disputes later on.

Transfer versus license

Transfer and licensing are often confused, but are fundamentally different:

• Transfer: ownership of the trademark is permanently transferred to the acquirer. The original holder has no further say in the matter thereafter.
• License: the trademark holder remains the owner and grants another party permission to use the trademark, for a fee and subject to conditions. The license may expire or be revoked.

If you want to get rid of the brand and have nothing more to do with it, a transfer is the way to go. If you want to remain the owner but allow someone else to use it (for example, a franchisee), a license is more suitable.

Honest recommendation

A deed of transfer of trademark rights is not a document to be drafted based on intuition: the written formal requirements, registration with the BOIP or EUIPO, and guarantees determine whether the transfer is truly legally secure. For a simple transfer of a single trademark between two parties who agree, a good model deed and careful registration can get you a long way without a lawyer. Legal assistance is particularly advisable in the case of a partial transfer, existing licenses or pledges on the trademark, a transfer as part of a business acquisition, or when disputes may arise regarding goodwill and the price.

Want to read more? See how to draft a deed of transfer of trademark rights and when it is smart to have one drafted. You can find a ready-made template on the deed of transfer of trademark rights.

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