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Drafting a deed of transfer of trademark rights

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Custom trademark transfer deed

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Our lawyers and in-house counsel specialize in drafting, reviewing, and amending legal documents and contracts. We look not only at the legal text but also at how you use the document in practice.

Custom solutions for your industry

Every business operates differently. That is why we take your industry, customers, working methods, and specific risks into account.

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Active since 2001
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Thousands of agreements per year

Reviews (21)

Danielle

The lawyer took the time to explain everything thoroughly. The lawyer always maintained an overview, even when the wish list changed in the meantime. Everything was delivered neatly and on time.

Fleur

Very clear and professional guidance. The clarity of the penalty clauses leaves no room for interpretation. Our business partners were impressed by the professionalism of the contracts.

Danique

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Anouar

Scheduling the appointment went very smoothly and quickly. The legal language was strict and forceful where necessary, but lenient where possible. It is clear that they have a passion for entrepreneurship.

Bass

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Younes

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Zahra

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Farid

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The flexibility in scheduling an appointment was very pleasant. They considered not only preventing disputes but also finding practical solutions. Everything was delivered neatly and on time.

Richard

Our company's specific needs were listened to carefully beforehand. Despite the tight deadline, there was no compromise on thoroughness and quality. These documents will undoubtedly save us a lot of headaches in the future.

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Amine

Our complex question was immediately reduced to the essence. The lawyer pointed out aspects we had not considered ourselves. The final result aligns 100% with our high standards.

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The founders of MKB Juristen

Our organization consists of several small teams working within various legal fields. Each legal field has its own senior in-house counsel and/or lawyers.

Denian Wielhouwer

Corporate lawyer in corporate law & business expert

Annelore Hendriks

Corporate lawyer, corporate law, administrative law

Ilja van Driel

Corporate law attorney, employment law

Jaime Boogaers

Corporate law, ICT & privacy law, energy law attorney

Custom choices

Which choices determine the content?

The content of the deed depends on a number of choices. By clarifying these in advance, you avoid ambiguity and ensure the deed aligns with your situation.

Choice or question	Why this matters legally
Which register does the trademark concern?	A Benelux trademark is registered with the BOIP, and a Union trademark (EU) with the EUIPO. This determines where the transfer must be registered and which rules apply.
Is the entire brand being transferred or a part?	You may transfer the trademark for all classes of goods and services or only for a part thereof; a partial transfer requires a precise delineation.
Are existing licenses or rights included?	Existing licenses, pledges, or liens on the trademark must be disclosed and settled, as they affect its value and usability.
What guarantees does the transferor provide?	The scope of the guarantees regarding validity, freedom from infringement, and jurisdiction determines the risk borne by the acquirer.
What is the consideration?	A purchase price, a contribution to a company, or a gift each lead to different tax and legal consequences reflected by the deed.

Clauses and provisions

Which elements belong in a deed of transfer of trademark rights?

A deed of transfer of trademark rights records which trademark is transferred and under what conditions. It must include at least the following elements to ensure the transfer is complete and registrable.

Provision	Relevant to	Legal point of attention
Parties	Always	Full details of the transferor (transferor) and transferee, including Chamber of Commerce number and authority of representation.
Description of the brand	Always	Exact designation of the mark: registration number, filing date, the register (Benelux/EUIPO) and the goods and services classes.
Transfer and delivery	Always	Declaration that the transferor transfers the trademark right and the transferee accepts this, with the act of delivery.
Purchase price or consideration	Generally	The consideration for the transfer and the method and term of payment, or a statement that it concerns a contribution or a gift.
Warranties	Generally	Declarations that the mark exists, is valid, free from attachment and licenses, and that the transferor is authorized to transfer.
Registration in the register	Always	Agreement on who will register the transfer with the Benelux Office (BOIP) or EUIPO and who will bear the costs.
Applicable law and disputes	Recommended	Choice of Dutch law and competent court or dispute resolution.
Date and signature	Always	Signed by both parties, with date, so that the moment of transfer is established.

Use in practice

How do you use this document correctly?

The deed only takes full effect if you take the right steps at the right time. Follow the sequence below to make the transfer legally valid and effective against third parties.

Situation	What should you do?	Point of attention
For signature	Check the register to see if the transferor is the current holder and if the trademark is valid and has not expired.	Only the actual holder can validly transfer.
Upon signing	Have both parties date and sign the deed and keep an original copy for each party.	The signed deed constitutes proof and the act of delivery of the transfer.
Immediately after signing	Apply for registration of the transfer with the BOIP or EUIPO.	Without registration, you cannot invoke the transfer against third parties.
After registration	Update your records, licenses, and contracts to the new holder.	This ensures your brand portfolio and ongoing agreements align with the new situation.

Common mistakes

When transferring a trademark, things often go wrong on points that are difficult to rectify afterwards. Watch out for the following mistakes and avoid them with a carefully drafted deed.

Wrong	Consequence	Better approach
Do not have the transfer registered	The transfer has no effect against third parties and the previous holder remains in the register.	Apply for registration with the BOIP or EUIPO immediately after signing.
Brand incompletely described	It is unclear which brand or classes will transfer, resulting in discussion.	State the registration number, register, and all relevant goods and services classes.
No warranties included	The acquirer bears the risk of an invalid or encumbered trademark.	Include warranties regarding validity, freedom from infringement, and the authority of the transferor.
Existing licenses ignored	The acquirer is bound by unknown third-party rights.	List and name existing licenses, pledges, and attachment rights in the deed.
Unauthorized signature	The transfer may not be legally valid.	Verify the authority of representation via an extract from the Commercial Register.

Risk profile

What is your situation and what do you pay attention to?

The specific points to consider vary depending on the situation. If you recognize your situation below, you know what to pay extra attention to in the deed.

Risk profile	Example	Focus in the document
Sale of a business unit	The brand moves with the assets of a company or industry.	Align the deed with the overarching purchase or asset-liability agreement and the classes associated with the component.
Contribution to a company	The brand is contributed as capital to a private limited company or partnership.	Pay attention to the valuation of the brand and the tax consequences of the contribution.
Transfer within a group	The brand is transferred to a holding or operating company.	Establish an arm's length fee and take into account the position of existing licenses within the group.
Transfer with active licenses	Third parties use the trademark under a license.	Arrange whether the licenses transfer to the acquirer and inform the licensees in a timely manner.

Additional documents

When is this document not enough?

A deed of transfer of trademark rights governs the transfer of the trademark, but does not cover every situation. In the following cases, you will need additional documents or guidance.

Situation	Supplementary document	Why
You do not want to transfer the brand, but allow others to use it	Related document	To share confidential information regarding the brand, you establish agreements in a confidentiality agreement.
You are transferring the brand as part of a larger transaction	Related document	In the case of joint operation or a broader deal, you regulate the mutual agreements in a cooperation agreement.
The acquirer remains indebted for payments after the transfer	Related document	If the purchase price remains unpaid, our debt collection agency helps you collect the debt.

Explanation of this document

Drafting a deed of transfer of trademark rights, why?

Not every entrepreneur knows exactly what a deed of transfer of trademark rights is, when you need them, and which risks they must cover. That is why we explain below what this document entails, what you should look out for, and why customized legal advice is important.

What is a deed of transfer of trademark rights?

A deed of transfer of trademark rights is the written agreement by which the trademark holder transfers their registered trademark, in whole or in part, to another party. After a legally valid transfer, the transferee becomes the new trademark holder and has the exclusive right to use the trademark for the goods and services for which it is registered, and to prohibit others from using it. The transfer of a trademark differs fundamentally from the transfer of copyright: trademark rights do not arise automatically but require registration, and the transfer must—in order to have effect on third parties—be registered in the trademark register at the BOIP for Benelux trademarks or at the EUIPO for Union trademarks. Without registration of the transfer, the new trademark holder cannot assert their rights against third parties who are unaware of the transfer. Our lawyers draft a legally watertight deed of transfer of trademark rights for you, oversee the registration at the BOIP or EUIPO, and advise you on IP due diligence in corporate acquisitions where trademarks are core assets.

When do you need a deed of transfer of trademark rights?

a deed of transfer of trademark rights is required in a wide range of situations. In the case of a business acquisition where the brand name or logo is part of the core assets, the trademark rights must be explicitly transferred — they do not automatically transfer with the business. In the case of a restructuring where a trademark is transferred from an operating company to a holding company or intellectual property company. In the case of the sale of a trademark separate from the business — trademark rights can be transferred independently of the transfer of the business pursuant to Section 2.31 of the BVIE. In the case of the establishment of a joint venture or franchise where the trademark rights are contributed to the new entity. And in the case of a name change or merger where existing trademark registrations in the name of the merging entity must be updated. In all these situations, a correct deed and timely registration are essential to protect the value of the trademark.

What are the formal requirements for a legally valid transfer of a trademark?

Under Article 2.31 of the Benelux Trademark Act (BVIE), the transfer of a Benelux trademark requires that the transfer be agreed upon in writing. The deed must be signed by the transferring party and, in principle, also by the transferee. The transfer must subsequently be notified to the BOIP for registration in the Benelux Trademark Register. This registration is not a constitutive requirement — the transfer is valid between the parties even without registration — but it does have decisive consequences for effect on third parties : only after registration in the register can the new trademark holder invoke the transfer against third parties, including subsequent buyers, licensees, and creditors. For EU trademarks, largely the same rules apply under the EU Trademark Regulation: written transfer and registration with the EUIPO. The BOIP and the EUIPO do not require a notarial deed but do assess the submitted documents for correctness. Missing signatures, unclear powers of attorney, or an overly vague description of the trademark to be transferred lead to delays or rejection. Our lawyers draft the deed in accordance with the requirements of the BOIP and the EUIPO and fully manage the registration procedure.

Can a trademark be partially transferred?

Yes. Pursuant to Section 2.31 of the BVIE, a trademark can be transferred for all or part of the goods and services for which it is registered. A partial transfer—also known as partial assignment—means that the transferring party retains the trademark for some of the classes and that the transferee acquires the trademark for another part. After a partial transfer, two separate trademark registrations exist side by side, both bearing the same trademark name but for different goods or services. This creates a risk of confusion and conflicts between the former and new trademark holder regarding the use of the trademark. A partial transfer therefore requires careful agreements regarding the delimitation of the goods categories, the use of the trademark in joint communications, and mutual licensing rights. Our lawyers will advise you on the desirability and risks of a partial transfer before you sign the deed.

What is due diligence when acquiring a brand?

In a business acquisition where trademark rights are among the assets to be acquired, thorough IP due diligence is indispensable. The buyer must determine which trademarks are registered by the selling party and in which countries, whether the selling party is actually the registered trademark holder or whether the trademark is registered in the name of an affiliated company not involved in the transaction, whether there are licenses encumbering the trademark that continue to run after the transfer, whether the trademark has been the subject of opposition, cancellation, or forfeiture proceedings, whether the trademark has been used normally for all registered goods and services over the past five years — in the event of non-use, a third party may have the trademark cancelled — and whether there are pledges or other limited rights encumbering the trademark. Licenses can be registered in the trademark registers, but this is not mandatory, so the registers do not provide conclusive evidence regarding the existence of a license. The buyer would therefore be well advised to obtain contractual guarantees from the seller regarding the unencumbered nature of the trademark. Our lawyers conduct the IP due diligence for you and advise you on the necessary warranties and indemnities in the purchase agreement.

What is the relationship between the deed of transfer and registration with the BOIP or EUIPO?

The distinction between the obligatory agreement and registration is of great practical importance. The deed of transfer is the agreement between the assignor and the assignee pursuant to which the trademark right is transferred — this is delivery in the legal sense. Registration with the BOIP or EUIPO is not a constitutive requirement for the validity of the transfer between the parties, but it is decisive for the effect on third parties: only the registered trademark holder can assert his rights against third parties. This means that a buyer who does not have the transfer registered in a timely manner runs the risk that the selling party transfers the trademark to a third party again or that a creditor of the seller seizes the trademark. Registration of the transfer must be applied for as soon as possible after signing the deed. Our lawyers handle the application with the BOIP or EUIPO immediately after signing the deed.

What are the tax considerations when transferring a trademark?

The transfer of a trademark has tax implications that are frequently underestimated in practice. In the case of a transfer between related parties—from an operating company to a holding company or vice versa—the arm's length principle: the transfer value must correspond to the value that an independent third party would have paid. A transfer value that is too low may be adjusted by the Tax Authorities as an informal capital contribution or distribution. The valuation of a trademark is complex and typically requires an economic valuation analysis based on royalty savings, turnover contribution, or market approach. In addition, the question arises as to whether the transfer is subject to VAT—trademark rights are in principle VAT-liable services, but may fall under the transfer of a going concern if they are part of a broader business transfer pursuant to Article 37d of the VAT Act. Our lawyers tailor the deed of transfer to the tax principles of your situation in collaboration with your tax specialist.

What happens to a trademark upon the bankruptcy of the trademark holder?

In the event of bankruptcy , the trademark falls into the bankruptcy estate, and the trustee can realize the trademark for the benefit of the creditors. A pledge on a trademark—which is possible pursuant to Article 3:236 of the Dutch Civil Code through registration of the pledge in the trademark register—gives the pledgee a preferential position regarding the proceeds. If you hold a license agreement for a trademark whose holder goes bankrupt, the licensee's position depends on whether the license has been registered in the trademark register: an unregistered license can be terminated by the trustee, whereas a registered license offers greater protection. For parties wishing to establish trademarks as security or protect licenses, timely registration in the trademark register is therefore essential. Our lawyers advise you on the registration of pledges and licenses in the trademark register.

What are the risks of an incomplete or incorrect deed of transfer?

In practice, our lawyers consistently see the same mistakes in trademark transfers. The most common is the failure to specify registration numbers and territories in the deed — a deed that merely transfers "trademark X" without mentioning the registration number and the territory (Benelux or EU) is too vague for registration with the BOIP or EUIPO. The second mistake is not transferring the trademark as part of a broader transaction: in an asset transaction, the trademark is included in the purchase agreement, but a separate deed of transfer is missing, making registration with the trademark office impossible. The third mistake is the absence of a power of attorney if the transferring party is a legal entity and the deed has not been signed by the authorized representative. And the fourth mistake is the failure to include related rights: domain names, trade names, and copyrights on the trademark logo that are not included in the deed of transfer remain with the assignor. Our lawyers draft a comprehensive deed of transfer that covers all these elements.

How does it work at MKBjuristen?

After a brief intake, our lawyers map out the trademark to be transferred, the registration numbers, the territory, and the desired scope of the transfer. Based on this, we draft a deed of trademark transfer that meets the requirements of the BOIP and the EUIPO — featuring a full description of the trademark including registration numbers, a clear arrangement regarding related rights such as domain names and logo copyrights, and guarantees regarding the power of disposal and unencumbered nature. We then handle the registration of the transfer with the BOIP or the EUIPO. Are you involved in a corporate acquisition where trademarks are core assets? In that case, we conduct the IP due diligence for you and advise on the necessary guarantees in the purchase agreement. Do you wish to pledge a trademark as security or register a license? We fully guide those procedures as well.

Are you unsure whether your document is legally correct? We would be happy to assess the sensible course of action: drafting, reviewing, or amending.

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A standard document seems cheap, until it doesn't fit your situation properly. That is why we provide custom legal solutions tailored to your business.

Custom solutions per industry and company

Every business operates differently and faces different legal risks. Therefore, we tailor the document to your industry, customers, agreements, and way of working.

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A legal document only has value if it suits your practice. That is why we look not only at the text, but also at how you use the document in your business.

Common mistakes with legal documents

A legal document often seems simple, but small errors can have major consequences later on. In practice, we see that entrepreneurs run the greatest risk when a document does not align well with their business, agreements, or way of working.

Using a standard document that does not suit the company
Forgot important agreements regarding payment, delivery, liability, or termination
Have a document generated without legal review
Continuing to use old documents while the company has changed
Not knowing how the document should be used correctly in practice

A legal document only prevents problems if it suits your situation. That is why we look not only at the text, but also at your company, agreements, and risks.

Why is a standard document often not enough?

Because a standard document does not take into account your industry, customers, risks, and specific agreements, important provisions may be missing or not align well with your practice.

Can I create a legal document myself using AI?

AI can assist in creating text, but does not independently assess whether the document is legally appropriate, complete, and usable for your business. Legal review therefore remains important.

When do I need to have my document checked?

Have your document checked if your business has changed, you have new customers or services, you have doubts about existing agreements, or the document has not been updated for a long time.

Will I also receive an explanation about the use of the document?

Yes. We explain how to use the document in practice, what to look out for, and which steps are important to prevent disputes afterwards.

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Drafting a deed of transfer of trademark rights

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Draft or check

Final version

Choose Tailored Legal Solutions

Custom trademark transfer deed

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Our expertise

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Custom trademark transfer deed

Have trademark transfer deed reviewed

Have trademark transfer deed amended

About us

Our expertise

Custom solutions for your industry

Our facts

Reviews (21)

Meet our office

Why MKB Juristen?

First, see how we work

What you can expect from us

Why customization?

What do you get?

The founders of MKB Juristen

Denian Wielhouwer

Annelore Hendriks

Ilja van Driel

Jaime Boogaers

Which choices determine the content?

Which elements belong in a deed of transfer of trademark rights?

How do you use this document correctly?

Common mistakes

What is your situation and what do you pay attention to?

When is this document not enough?

Drafting a deed of transfer of trademark rights, why?

Why not use a standard document?

Custom solutions per industry and company

Webshops & e-commerce

Business services

Construction, installation & execution

Software, SaaS & digital services

Trade, supply & wholesale

Consultants, freelancers & advisors

Common mistakes with legal documents

Why is a standard document often not enough?

Can I create a legal document myself using AI?

When do I need to have my document checked?

Will I also receive an explanation about the use of the document?

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