Recordals

A recordal is an entry in the EUIPO Register, the database containing particulars of all trade marks and designs registered by the EUIPO, which implies the amendment of certain information therein.

The recordals that can be filed using online forms are shown below. To view the information for each, click on the relevant link. Only the recordals provided for in Article 111 of the European Union trade mark (EUTMR) and Article 69 of the registered Community design (RCD) regulation can be entered in the EU trade mark and registered Community design registers respectively.

For more information, please consult our Guidelines on trade marks and designs .

• Total and partial transfer

  A total transfer is the change of ownership of a European Union trade mark (EUTM) or registered Community design (RCD) application or registration. A partial transfer is the transfer of some of the goods and / or services related to an EUTM application or registration. Partial transfer is not possible for RCDs.

  For the recordal of transfer, there is no need to send documentary evidence of such transfer (e.g. a deed of assignment) when the representative who signed the request ticks on the box Representative for both parties. The representative may sign on behalf of both parties only when he or she is listed as the representative appointed by the original owner in the database and is also appointed as the representative of the new owner / beneficiary.

  In all other cases, the recordal application must be accompanied by a declaration signed by both parties, evidence of the transfer, etc.

  Requests for recordals of transfers may be made in respect of EUTMs or RCDs that are still at the application stage. The same rules apply .

  When requesting a total or partial transfer, the final beneficiaries of the rights will be those added by the user in the section “Assignee or right beneficiary” of the online form. For example:

  If there is a trade mark with two owners ‘A’ and ‘B’ and the owner ’A’ wants to transfer his rights to a future owner ‘C’ but the owner ‘B’ wants to keep his rights, then the user will have to add ‘B’ and ‘C’ in the section ‘Assignee or right beneficiary’.

  

• Division

  A trade mark or trade mark application can be ‘divided’ at the request of the trade mark applicant / owner. A division of a trade mark registration or application is particularly useful in order to isolate a disputed trade mark for certain goods or services and maintain the registration for the remainder. While a partial transfer, which involves a change of ownership, is free of charge, a request for the division of an EUTM that will remain in the hands of the same owner is subject to a fee.

  Division cannot be requested :

  • before a filing date has been granted
  • during the three-month period following the publication of the EUTM application
  • if the goods and services are the object of opposition or cancellation proceedings

  The same conditions apply as long as a counterclaim for revocation or declaration of invalidity is pending before an EUTM court.

  The goods and services to be divided must be clearly defined, with no overlap between the goods and services that remain in the original application or registration and those in the new application(s) or registration(s) .

• Seniority/cancellation of seniority

  The owner of an earlier trade mark registered in a Member State, including a trade mark registered under international arrangements having effect in a Member State, who holds an identical EUTM for goods or services that are identical to or contained within those for which the earlier trade mark was registered, may, for the EUTM, claim the seniority of the earlier trade mark in respect of the Member State in or for which it is registered.

  Seniority may be claimed at any time after registration of the EUTM.

  Seniority may only be claimed from an earlier registration, not an earlier application. The date of the earlier trade mark must be before the filing date or, if available, the priority date of the EUTM.

  However, the earlier right must still be valid. A seniority claim will not be accepted if the earlier right has expired. If the earlier registration has already lapsed when the claim is made, seniority cannot be claimed, even if the relevant national trade mark law provides for a six-month grace period for renewal.

  It is also the applicant’s responsibility to ensure that the requirements regarding triple identity (same owner, same mark, same goods and services) are met.

  The EUIPO will normally only examine whether the marks are identical and not whether the owners, goods and / or services are.

  Pursuant to Decision No EX-05-5, the owner is not required to file a copy of the registration if the required information is available to the EUIPO on the website of the national office concerned. If no copy of the registration is submitted, the EUIPO will first search for the necessary information on the relevant website and only if the information is not available there will it ask the owner for a copy.

  Pursuant to Article 3 of Decision No EX-05-5, the copy of the relevant registration must consist of a copy (simply photocopies suffice) of the registration or renewal certificate or extract from the Register, or an extract from the relevant national Gazette, or an extract or printout from an official database .

  Cancellation of seniority

  The EUTM owner may at any time request the cancellation of the seniority claim from the Register of its own motion.

  Seniority claims may also be cancelled by a decision of a national court (see Directive 2008/95/EC).

  The cancellation of the seniority claim will be published in the EUTM Bulletin. Article 111(3) EUTMR) provides that the cancellation of the seniority will be registered together with the items referred to in Article 111(2) EUTMR .

• Rights in rem/cancellation of rights in rem

  A right in rem or ‘real right’ is a limited property right and an absolute right. A right in rem refers to a legal action directed towards property, rather than towards a particular person, allowing the owner of the right the opportunity to recover, possess or enjoy a specific object. These rights may apply to trade marks or designs. They may consist, inter alia, in use rights, usufruct or pledges. In rem is different from in personam, which is directed towards a particular person. The most common rights in rem for trade marks or designs are pledges or securities.

  Other examples are DE: Pfand, Hypothek; EN: guarantees, warranties, bails and sureties; ES: prenda, hipoteca; FR: nantissement, gage, hypothèque, garantie, caution; IT: pegno, ipoteca.

  There are two types of right in rem that the applicant can ask to be noted in the file or entered in the Register :

  • rights in rem that serve the purpose of guaranteeing securities (pledges, charges, etc.)
  • rights in rem that do not serve as a guarantee (e.g. usufruct)

  The following information must be provided:

  • the registration number of the EUTM / RCD concerned. If the request relates to several EUTMs / RCDs, each of the numbers must be indicated
  • the right holder’s name, address and nationality / State in which it is domiciled
  • if the pledgee designates a representative, the name and business address of the right holder’s representative
  • proof of the right in rem. There is sufficient proof of the right in rem if the request for its registration is accompanied by any of the following evidence: 1) a declaration, signed by the EUTM / RCD owner, that it agrees to the registration of the right in rem; 2) a request submitted jointly by the EUTM / RCD owner and the pledgee or by the pledgee alone and signed by both parties.

  Applications for recordals of rights in rem can be made for EUTMs or RCDs even at the application stage. The same rules apply.

  Cancellation of rights in rem
  The registration of a right in rem will be cancelled or modified at the request of an interested party, that is, the applicant or owner of the EU trade mark or the registered pledgee. In either case, the following information must be provided:

  • the registration number of the EU trade mark or RCD
  • the particulars of the right to be cancelled (to be attached via the online recordal application form)
  • documentary evidence showing that the registered right no longer exists or a statement by the rights holder to the effect that they consent to cancellation of the recordal

  Applications for recordals of cancellations of rights in rem can be made for EUTMs or RCDs even at the application stage. The same rules applyy.

• Alteration of a trade mark

  An application to alter a trade mark, that is to say, the representation of the mark, must be made in writing in one of the five languages of the EUIPO and is subject to a fee. The Regulations do not make any provision for the alteration of other elements of the EUTM registration.

  Article 54(2) of the European Union trade mark Regulation (EUTMR) allows the representation of the mark to be altered only under extremely limited conditions, namely only when :

  • the EUTM includes the EUTM owner’s name and address, and
  • these are the elements to be altered, and
  • the alteration would not substantially affect the identity of the trade mark as originally registered
• Levies of execution

  A levy of execution is the act by which a court officer appropriates a debtor’s property, following a judgment of possession obtained by a plaintiff from a court. In this way a creditor can recover its claim from all of the debtor’s goods, including from its trade mark rights.

  Registration of a levy of execution may be requested by :

  • the owner of the EUTM
  • the beneficiary of the levy of execution
  • a court or authority

  The formal conditions with which the request must comply depend on who submits the request.

  The additional information that must be provided for applications to record levies of execution is :

  • the registration number of the EUTM or RCD
  • the beneficiary’s name, address and nationality and the State in which it is domiciled or has its seat or an establishment
  • if the beneficiary designates a representative, the representative’s name and business address; alternatively, the ID number allocated by the EUIPO

  Applications for recordals of levies of execution can be made for EUTMs or RCDs even at the application stage. The same rules apply.

• Licences

  A trade mark licence is a contract by virtue of which the owner or applicant (hereinafter the owner) of a trade mark (the licensor), whilst retaining their ownership, authorises a third person (the licensee) to use the trade mark in the course of trade, under the terms and conditions set out in the contract.

  A licence refers to a situation where the rights of the licensee in the EUTM arise from a contractual relationship with the owner. The owner’s consent to, or tolerance of, a third party using the trade mark does not amount to a licence.

  Optional contents of the request :

  • Indication of whether the licence to be recorded is exclusive or non-exclusive. Where registration of an exclusive licence is sought, a statement to this effect must be made in the request for registration. Unless you have indicated otherwise, it will be deemed to be non-exclusive.
  • Where registration of a licence limited to only some of the goods or services is requested, indication of the goods or services for which the licence has been granted.
  • Where the request is to register the licence as a territorially limited licence, indication of the part of the European Union for which the licence has been granted. A part of the European Union may consist of one or several Member States or one or several administrative districts in one Member State.
  • Where the registration of a licence for a limited period of time is requested, indication of the expiry date and, optionally, of the date of commencement of the licence.
  • Where the licence is granted by a licensee whose licence is already entered in the EUTM Register, an indication that the request is for a sub-licence. Sub-licences can only be recorded after the parent licence has been recorded.

  Note: Where the recordal application is made by the licensee alone, a copy of the licence agreement or other proof that the licensor agrees to the recordal of the licence must be attached to the application.

  Cancellation of a license

  The registration of a licence will be cancelled or modified at the request of an interested party, that is, the EUTM applicant / owner or the registered licensee.

  The EUIPO will refuse the cancellation, transfer and / or modification of a licence or a sub-licence when the main licence has not been entered in the Register.

  Where recordal of the cancellation of a licence / sub-licence is sought, the following information must be provided :

  • the registration number of the EUTM or RCD
  • the particulars of the licence to be cancelled
  • documentary evidence showing that the registered right no longer exists or a statement by the licensee to the effect that they consent to cancellation

  Applications for recordal or cancellation of licences can be made in respect of EUTMs or RCDs even at the application stage. The same rules apply.

  Additional documentation is required when filing an application to record a licence; this can be uploaded via the Other attachments section of the application form .

• Total and partial surrender

  At any time after registration an EUTM may be either wholly or partially surrendered by its owner. The surrender must be declared to the EUIPO in writing.

  Total surrender can also be filed for registered Community designs.

  Surrenders only become legally effective on the date of entry in the EUTM Register.

  Certain additional requirements have to be met before surrender can be registered if third parties (such as licensees, pledgees, etc.) have registered rights in the EUTM concerned.

  However, if the owner proves to the EUIPO that the licensee, pledgee, etc. has given its consent to the surrender, the surrender will be registered immediately upon receipt of that notice.

  If the EUTM owner merely submits proof that it has informed the licensee/pledgee of its intention to surrender, the EUIPO will inform the owner that the surrender will be registered three months after the date on which the EUIPO received the evidence.

  The owner’s rights in the registered EUTM, as well as those of its licensees and any other holders of rights in the mark, lapse with ex nunc effect on the date of the registration of the surrender in the Register. Therefore, the surrender has no retroactive effect.

  The surrender has procedural and substantive effects.

  In procedural terms, when the surrender is entered in the Register, the EUTM ceases to exist and any proceedings involving the mark before the EUIPO terminate. The substantive effects of surrender vis-à-vis third parties comprise the EUTM owner renouncing any rights arising from its mark in the future.

  An EUTM may be surrendered in part, that is, for some of the goods and services for which it is registered. A partial surrender only becomes effective on the date it is entered in the Register.

  For a partial surrender to be accepted, the following two conditions relating to the goods and services must be met :

  • the new wording must not constitute an extension of the list of goods and services
  • the partial surrender must constitute a valid description of the goods and services
• Insolvency

  The insolvency proceedings in which an EUTM may be involved are those opened in a Member State in the territory of which the debtor has their centre of main interests. However, where the debtor is an insurance undertaking or a credit institution, as defined in Directives 2001/17/EC24 and 2001/24/EC25 respectively, the only insolvency proceedings in which an EUTM may be involved are those opened in the Member State where that undertaking or institution has been authorised. The ‘centre of main interests’ should correspond to the place where the debtor conducts the administration of its interests on a regular basis and is, therefore, ascertainable by third parties. In the case of joint ownership of an EUTM, the above applies to the joint owner’s share.

  Insolvency proceedings are understood as the collective proceedings entailing the partial or total divestment of a debtor and the appointment of a liquidator. A liquidator is understood as any person or body whose function it is to administer or liquidate assets of which the debtor has been divested or to supervise the administration of their affairs. A court is understood as the judicial body or any other competent body of a Member State empowered to open insolvency proceedings or to take decisions in the course of such proceedings. A judgment in relation to the opening of insolvency proceedings or the appointment of a liquidator is understood as including the decision of any court empowered to open such proceedings or to appoint a liquidator.

  Where an EUTM is involved in insolvency proceedings, the competent national authority may request that an entry to this effect be made in the Register and published in the European Union Trade Marks Bulletin. The request should be made in writing to the EUIPO. No fee is required .

• Amendments to regulations for EU collective marks

  For EU collective marks and EU certification marks, regulations governing use must be submitted. This action enables you to amend the regulations as necessary.

  The amendment will not be entered in the Register if the amended regulations do not satisfy the requirements of Article 75(2) of the European Union trade mark Regulation (EUTMR), for collective marks, and Article 84 EUTMR for certification marks, or if one of the grounds for refusal referred to in Article 76 or Article 85 EUTMR respectively is involved.

  Where an amendment to the regulations is accepted, it will be registered and published .

• Appointment, replacement or deletion of designer

  Design applications may cite the (team of) designer(s). The right to be cited as designer is not limited in time. This action enables you to amend the citation.

  The recordal can only be requested by the holder or representative of the design. The design must be published (status A1) or under deferment (status A2).

• Other recordals

  There are other, less frequently used, recordal types, such as sub-licences or modification of insolvency.

  Additional documentation will normally be required to support your application when filing other types of recordals; files can be uploaded via the Other attachments section of the application form when prompted .