text: Section 3 EUTMs and EUDs as objects of property

text: Section 3 EUTMs and EUDs as objects of property — Chapter 1 Transfer

text: Section 3 EUTMs and EUDs as objects of property — Chapter 1 Transfer ‘communications back-upʼ. For transfers, the User Area provides a specific e-action in the ‘recordalsʼ section . Register entries and their effect: the entries in the EUD Register differ. Entitlement

text: Section 3 EUTMs and EUDs as objects of property — Chapter 1 Transfer which there is only one and the same original proprietor and only one and the same new proprietor, or by declaring its agreement that the application should be dealt with in two or more separate proceedings. Otherwise, the application for registration of a transfer will be rejected in its entirety. The party concerned may file an appeal against this decision.

text: Section 3 EUTMs and EUDs as objects of property — Chapter 1 Transfer 3. If the new proprietor designates a representative, the representative’s name and ID number assigned by the Office. If the representative has not yet been assigned an ID number, the business address must be indicated. For more information on who may act as a representative and the appointment of a representative, see the Guidelines Part A, Section 5 Parties to the proceedings and professional representation, paragraph 5. Appointment of a professional representative. For additional requirements in cases of partial transfer, see paragraph 5 below.

text: Section 3 EUTMs and EUDs as objects of property — Chapter 1 Transfer 22/09/2021,

text: , Henry Cotton’s and Henry Cotton’s (fig.), EU:T:2021:610,§ 59 and 69).

text: Section 3 EUTMs and EUDs as objects of property — Chapter 1 Transfer transfer has reached the Office. The basic principle is that the new proprietor substitutes the original proprietor in the proceedings. The practice of the Office when dealing with transfers in oppositions is described in the Guidelines, Part C, Opposition, Section 1, Opposition Proceedings, paragraph 7.5.

identifier: Trade mark guidelines, Part E Register operations, Section 3 EUTMs and EUDs as objects of property

title: Trade mark guidelines, Part E Register operations, Section 3 EUTMs and EUDs as objects of property

text: Part E Register operations Section 3 EUTMs and EUDs as objects of property

text: Table of Contents

text: Chapter 2 Licences, rights in rem, levies of execution, insolvency

text: Part E Register operations Section 3 EUTMs and EUDs as objects of property Chapter 1 Transfer

text: 1 Introduction

text: Articles 13 and 14 EUTMIR

text: Article 9 EUDIR

text: A transfer is the change in ownership of the property rights in a European Union trade mark (EUTM) or an EUTM application from one entity to another. EUTMs and EUTM applications may be transferred from the current proprietor to a new proprietor, primarily by way of assignment or legal succession. Unless otherwise provided, the practice applicable to EUTMs is also applicable to EUTM applications. The transfer may be limited to some of the goods or services for which the mark is registered or applied for (partial transfer). In contrast to a licence or conversion, the transfer of an EUTM cannot affect the unitary character of the EUTM. Therefore, an EUTM cannot be ‘partially’ transferred for some territories or Member States. Both registered European Union designs (EUDs) and applications for an EUD may also be the subject of a transfer. The provisions in the EUDR and EUDIR dealing with the transfer of registered European Union designs are almost identical to the equivalent provisions of the EUTMR, EUTMDR and EUTMIR. However, exceptions and specific provisions for EUDs are detailed in paragraph 3. Upon request of one of the parties, transfers of EUTMs and EUDs are entered in the EUTM and EUD Registers and published. There is no fee for registering a transfer. According to Article 20(11) EUTMR and Article 31(6) EUDR, the registration of a transfer is not a condition for its validity. However, if a transfer is not registered by the Office, the successor in title may not invoke the rights arising from the registration of the EUTM or EUD. Moreover, the new proprietor will not receive communications from the Office, in particular, during inter partes proceedings, nor the notification of the renewal period (as set out in Article 53(2) EUTMR and Article 66(2) EUDR). Furthermore, according to Article 19 EUTMR and Article 30 EUDR, in all aspects of the EUTM and EUD as an object of property that are not further defined by provisions of the EUTMR and EUDR, the proprietor’s address defines the applicable subsidiary national law. Consequently, it is important to register a transfer at the Office to ensure that entitlement to EUTM and EUD applications and registrations is clear.

text: 1.1 Transfers

text: Article 20 EUTMR

text: Article 31 EUDR

text: A transfer of ownership involves two aspects, namely the validity of the transfer between the parties and the impact of a transfer on proceedings before the Office, which will only be triggered after the entry of the transfer in the EUTM or EUD Registers (see paragraph 1.2 below). An EUTM may be transferred independently of any transfer of the undertaking to which it belongs and in respect of some or all of the goods and services for which it is registered (Article 20(1) EUTMR).

text: 1.1.1 Assignment

text: When a transfer is made by an assignment, it is only valid where the assignment is made in writing and is signed by both parties. This formal requirement for the validity of the transfer of a EUTM or an EUD is applicable irrespective of whether, under the national law governing transfers of (national) trade marks or designs, an assignment is valid without observing a particular form, such as the need for the transfer to be in writing and have the signatures of both parties. The exceptions to the above are where the assignment is the result of a court decision, or in EUTM-related proceedings where a decision is taken by the Office in a request for assignment under Article 21 EUTMR It should be noted that the change of ownership of EUDs due to entitlement proceedings before a national authority are not processed through a transfer but through a change in the ownership resulting from the final decision under Article 15 EUDR (see paragraph 3 below).

text: 1.1.2 Inheritance

text: When the proprietor of an EUTM or EUD dies, the heirs will become proprietors of the EUTM or EUD by way of individual or universal succession. This is also covered by the rules on transfers.

text: 1.1.3 Merger

text: A universal succession also exists when there is a merger between two companies that leads to the formation of a new company, or an acquisition by one company taking over another. Where the whole of the undertaking to which the mark belongs is transferred, there is a presumption that the transfer includes the EUTM or EUD unless, in accordance with the law governing the transfer, an agreement to the contrary was made or unless circumstances clearly dictate otherwise.

text: 1.1.4 Applicable law

text: Article 19 EUTMR

text: Article 30 EUDR

text: Unless provided otherwise by the EUTMR or EUDR, transfers are subject to the national law of a Member State determined by Article 19 EUTMR and Article 30 EUDR. The national law applicable under that provision is the national law in general and, therefore, also includes private international law which, in turn, may refer to the law of another State.

text: 1.2 Legal effects of the transfer

text: Article 13 EUTMIR

text: Article 9 EUDIR

text: The general rule is that a successor in title may invoke the rights arising from the registration of the EUTM or the EUD only upon entry in the EUTM or EUD Register (see also 16/01/2020,

text: , Sativa (fig.) / K KATIVA (fig.) et al, EU:T:2020:3, § 22, 25-26). Nevertheless, prior to such entry in the Register, a transfer shall be effective against any third party who acquired rights in the EUTM or the EUD and who was aware of the transfer at the time those rights were acquired. An exception to this general rule applies in cases of universal succession (e.g. transfer of the whole undertaking). The above principles also apply to transfers resulting from the implementation of a decision or judgment, even where they establish proprietorship with previous or retroactive (ex tunc) effect. However, in the period between the date when the Office receives the application to register a transfer and the date of registering the transfer, the new proprietor may

text: already make submissions to the Office with a view to observing time limits. For example, if a party has applied to register the transfer of an EUTM application against which the Office has raised objections on absolute grounds, the new proprietor may reply to those objections (see paragraph 6). In an application for registration of a transfer, the Office will only examine whether sufficient evidence of the transfer has been submitted. For changes of ownership following national entitlement proceedings regarding EUDs, see paragraph 3.1.

text: 2 Transfers v changes of name

text: Article 55 EUTMR

text: Article 12 EUTMIR

text: Article 69 EUDR

text: Article 8 EUDIR

text: A transfer must be distinguished from a change of name of the proprietor. A change in the name of the proprietor is a change that does not affect the identity of the proprietor, whereas a transfer is a change in the identity of the proprietor. In particular, no transfer is involved when a natural person changes their name due to marriage, or following an official procedure for changing a name, or when a pseudonym is used instead of the proper name, etc. In all these cases, the identity of the proprietor is not affected. Where the name or the corporate status of a legal person changes, the criterion for distinguishing a transfer from a mere change of name is whether or not the identity of the legal person remains the same. If the identity remains the same, it will be registered as a change of name (06/09/2010, R 1232/2010-4 , Cartier, § 12-14). In other words, where there is no termination of the legal entity (such as would occur in the case of a merger by acquisition, where one company is completely absorbed by the other and ceases to exist) and no start-up of a new legal entity (e.g. as would be the case following the merger of two companies leading to the creation of a new legal entity), there is only a change in the formal corporate organisation that already existed, and not in the actual identity itself. Therefore, the change will be registered as a change of name, where appropriate. For example, if an EUTM is in the name of Company A and, as the result of a merger , this company is absorbed by Company B, there is a transfer of assets from Company A to Company B. Likewise, during a division of Company A into two separate entities, one being the original Company A and the other being a new Company B, if the EUTM in the name of Company A becomes the property of Company B, there is a transfer of assets.

text: Normally, there is no transfer if the company registration number in the national register of companies remains the same. However, there is in principle the prima facie presumption that there is a transfer of assets if there is a change of country (see, however, 06/11/2013, R 546/2012-1 , PARFUMS LOVE / LOVE et al.). If the Office has any doubt about the national law applicable to the legal person concerned, it may require appropriate information from the applicant for registration of the change of name. Therefore, unless ruled to the contrary under the applicable national law, the change of company type, provided that it is not accompanied by a transfer of assets carried out by means of a merger or an acquisition, will be treated as a change of name and not as a transfer. However, if the change of company type is the result of a merger, a division or a transfer of assets, depending on which company absorbs or is separated from the other, or on which company transfers which assets to the other, it may be a case of transfer.

text: 2.1 Erroneous application to register a change of name

text: Article 55 EUTMR

text: Article 12 EUTMIR

text: Article 69 EUDR

text: Article 8 EUDIR

text: When a request is made to register a change of name, but the evidence shows that it is actually a transfer of an EUTM or EUD, the Office informs the applicant accordingly and invites it to file an application for registration of a transfer within a specified period. If the applicant agrees or does not submit evidence to the contrary and files the corresponding application to register a transfer, the transfer will be registered. If the applicant does not modify its request and insists on registering the change as a change of name, or if it does not respond, the request to register a change of name will be rejected. The party concerned may file an appeal against this decision. A new application for the registration of the transfer may be filed at any time.

text: 2.2 Erroneous application for the registration of a transfer

text: Article 13 EUTMIR

text: Article 9 EUDIR

text: When an application is made to register a transfer, but actually refers to a change of name of an EUTM or EUD proprietor, the Office informs the applicant accordingly and invites it to give, within a specified period, its consent to register the indications concerning the proprietor in the EUTM or EUD Register. If the applicant agrees, the change of name will be registered. If the applicant does not agree and insists on registering the change as a transfer, or if it does not respond, the application for the registration of a transfer will be rejected.

text: 3 Exceptions and specific provisions for EUDs

text: 3.1 Transfers v changes of ownership due to entitlement proceedings for EUDs

text: Regarding EUDs, a transfer must be distinguished from a change of ownership following entitlement proceedings. Pursuant to Article 15 EUDR, EUDs may be the subject of entitlement proceedings. Changes in ownership that arise from a final decision of the competent authority or court of the respective Member State are entered in the EUD Register upon request. For more information, see the Guidelines, Part E Register Operations, Section 3, Chapter 2 Licences, rights in rem, levies of execution, insolvency proceedings, entitlement proceedings or similar proceedings, paragraph 8.2. There are, in particular, the following differences between changes of ownership arising out of transfers and entitlement proceedings: Request to the Office: The rules regarding the proof for the request are different, see

text: for entitlement proceedings the Guidelines, Part E Register Operations, Section 3, Chapter 2 Licenses, rights in rem, levies of execution, insolvency proceedings, entitlement proceedings or similar proceedings, paragraph 8.2. and for transfers, paragraph 4.5, below. Moreover, how the request can be submitted within the user area is different. For entitlement proceedings, the user must choose the

text: proceedings may be entered in the register as of their initiation. This freezes the EUD and prevents the registered holder from performing any acts that may prevent the legitimate holder from exercising rights over the EUD (e.g. transfer the design) (for the legal effects of transfers see paragraph 1.2). Licences: While the registration of a transfer might not affect existing licences,

text: licences will lapse upon the entry into the EUD Register of a change of ownership resulting from entitlement proceedings (Article 16(1) EUDR). Persons entitled under Article 14 EUDR should inform the Office immediately about the initiation and the result of entitlement proceedings before national courts or authorities. The option of a claim to entitlement applicable to EUDs does not exist for EUTMs. Judgments on the ownership of an EUTM must be implemented by means of a transfer.

text: 4 Requirements for an application for registration of a transfer

text: Article 20 EUTMR Article 13 EUTMIR Article 31 EUDR Article 9 EUDIR

text: It is strongly recommended that the application for registration of a transfer for an EUTM be submitted electronically via the Office’s website (e-recordals). An application for a transfer of an EUD can only be submitted electronically. For more information see the Guidelines, Part A, Section 1, Means of Communication, time limits, paragraph 3.1.

text: 4.1 Languages

text: The application for the registration of a transfer for an EUTM or EUD application must be made in the first or second language of the application.

text: When the application for the registration of the transfer relates to more than one EUTM or EUD application, the applicant must select a language for the application that is common to all the EUTMs or EUDs concerned. If there is no common language, separate applications for registration of the transfer must be filed. The application for the registration of a transfer for a registered EUTM or an EUD must be submitted in one of the five languages of the Office, namely, English, French, German, Italian or Spanish. When the application for the registration of the transfer relates to more than one EUTM or EUD registration, the applicant must select one of the five languages of the Office as a common language. Any supporting documents may be filed in any official language of the European Union. This applies to any document submitted as proof of the transfer, such as a countersigned transfer document or a transfer certificate, a deed of assignment or an extract from a trade register or a declaration agreeing to register the successor in title as the new proprietor. When the supporting documents are submitted in an official language of the European Union that is not the language of the proceedings, the Office may require a translation into that language. The Office will set a time limit to submit the translation. If the translation is not submitted within the time limit, the document will not be taken into account and will be considered not to have been submitted. For more information on languages and use of forms see the Guidelines1 Introduction on page 58. For more information on translations see the Guidelines Part A, Section 4, Language of Proceedings, paragraph 7, Translations and their certification.

text: 4.2 Application for registration of a transfer filed for more than one EUTM or EUD

text: A single application for the registration of a transfer for two or more EUTMs or EUDs may be submitted only if the registered proprietor and beneficiary, or assignee, are the same in each case. Separate applications are necessary when the original proprietor and the new one are not exactly identical for each EUTM or EUD. For example, this is the case where there is one successor in title for the first one and there are multiple successors in title for another, even if the successor in title for the first one is among the successors in title for the other. It is immaterial whether the representative is the same in each case. When a single application is filed in such cases, the Office will issue a deficiency letter. The applicant may overcome the objection either by limiting the application for the registration of the transfer to those EUTMs or EUD applications or registrations for

text: 4.3 Parties to the proceedings

text: The application for registration of a transfer may be requested at the Office by:

text: 1. the proprietor(s), or

text: 2. the proprietor(s) jointly with the assignee(s), or

text: 3. the assignee(s), or

text: 4. a court or authority. The formal conditions with which the application must comply depend on who submits the application.

text: 4.4 Formal requirements

text: 4.4.1 Indications concerning the EUTM/EUD and the new proprietor

text: The application for registration of a transfer must contain the following information: 1. The registration number of the EUTM or EUD concerned. If the application relates to several EUTMs or EUDs, each of the registration numbers must be indicated. 2. The details of the new proprietor. These details correspond to the indications required for an applicant for a new EUTM or EUD application. For more information on the identification requirements of the applicant, see the Guidelines Part A, Section 5 Parties to the proceedings and professional representation, paragraph 3. Identification of parties to the proceedings.

text: 4.4.2 Representation

text: The general rules on representation apply (see the Guidelines, Part A, General Rules, Section 5, Parties to the Proceedings and Professional Representation).

text: 4.4.3 Signatures

text: Articles 20(3) and (5) and 119(4) EUTMR Article 13 EUTMIR Article 63(1) EUTMDR Articles 31(1) and (3) and 115(4) EUDR Article 9 EUDIR Article 17(1) EUDDR The requirements concerning the person entitled to file the application for registration of the transfer and the signatures must be considered together with the requirement to submit proof of the transfer. The principle is that the signatures of the original proprietor and the new proprietor must appear together or separately on the application for registration of the transfer or in an accompanying document. In the case of co-ownership, and where the transfer concerns the ownership as a whole, all co-owners must sign or appoint a common representative. For more information on the requirements of signatures and explanations regarding the distinctions between signatures in applications or in supporting evidence, see the GuidelinesPart A, Section 1, Means of Communication and time limits, paragraph 3.1.5, Signature.

text: 4.4.4 Proceedings affecting the transfer

text: The examination of the formal requirements for registering a transfer means taking into account facts that may have implications for the legality of that registration including the existence of insolvency proceedings at the national level (22/09/2021,

text: , Marina Yachting, EU:T:2021:609, § 68). Where the proprietor of an EUTM or EUD is subject to insolvency proceedings, on request, an entry to this effect should be made in the Register and published in the Bulletin. Any subsequent application for registration of a transfer concerning the same right will be automatically suspended and can only be acted upon with the express authorisation of the liquidator or the national court responsible for the insolvency proceedings. Where the Office registers a transfer but is then made aware that the proprietor was insolvent at the time, it may revoke the transfer. The Office should also refuse to register a transfer if it was preceded by an earlier request that had been submitted in accordance with Article 24(3) EUTMR or Article 35(4) EUDR, informing it that the proprietor of an EUTM or EUD was subject to insolvency proceedings (22/09/2021,

text: , Henry Cotton’s and Henry Cotton’s (fig.), EU:T:2021:610, § 70 ). Where the Office receives proof that ownership of an EUTM or EUD is being contested in a competent national court it will suspend any pending transfers until one of the parties has submitted a copy of the final decision of the dispute to the Office.

text: 4.5 Proof of transfer

text: Article 20 EUTMR

text: Article 31 EUDR

text: A transfer may be registered only when it is proven by documents duly establishing the transfer, such as a copy of the deed of transfer. However, there are situations where a copy of the deed of transfer is not necessary. Proof of transfer is not necessary in the following circumstances: When the original proprietor and the new proprietor both sign the application for

text: registration of the transfer. When the original proprietor is the applicant for registration of the transfer and where

text: the application is accompanied by a declaration signed by the new proprietor stating that it agrees to the registration of the transfer.

text: When the new proprietor is the applicant for registration of the transfer and where

text: the application is accompanied by a declaration, signed by the original proprietor, stating that it agrees to the registration of the transfer. When the original proprietor’s representative on file is also asking to be appointed

text: as the new proprietor’s representative, the representative may sign the application for registration of the transfer on behalf of both the original and the new proprietor. Proof of transfer is necessary in all other situations, including: when the representative that signs the transfer application form on behalf of both

text: the original and the new proprietor is not the representative on file of the original proprietor (i.e. the transfer application form simultaneously appoints the person as representative of both parties and transfers the EUTM or EUD). Proof of transfer must be supplied with the transfer application request. If it is not provided, the Office will issue a deficiency to request evidence of the transfer (i.e. an authorisation signed by the original proprietor, proof of transfer, confirmation of the transfer by the original proprietor or its representative on file). Where proof of transfer is required, parties to the proceedings may also use the forms established under the Trademark Law Treaty available on WIPO’s website (https:// wipolex.wipo.int/en/treaties/textdetails/12680). The relevant forms are the ‘Transfer Document’ – a document conceived as constituting the transfer (assignment) itself – and the ‘Certificate of Transfer’ – a document in which the parties to a transfer declare that a transfer has taken place. Either of these documents, duly completed, constitutes sufficient proof of transfer. However, other means of proof are not excluded. Therefore, the agreement (deed) itself or any other document proving the transfer may be submitted. The transfer of rights to an EUTM or EUD must explicitly follow from the document(s) filed in support of the request. Accordingly, the evidence must not only contain a clear declaration of the transfer of rights, but also specify the relevant EUTM or EUD number. For instance, an authorisation to commercially exploit a trade mark does not, in itself, constitute formal proof of a transfer of ownership (07/11/2023,

text: , Diego maradona, EU:T:2023:710, § 38-39 and § 44-45). Regarding confidentiality, the party submitting the proof must bear in mind that the content of files are available for public inspection, and this is particularly relevant where contracts or other documents are submitted as evidence of a transfer, as they may contain sensitive data. Consequently, certain information may be blacked out before being submitted to the Office, or certain pages may be omitted altogether. The evidence required in support of a transfer does not need to include commercially sensitive items such as the price paid for the EUTM or EUD in question. While omitting the sensitive information is preferable, alternatively, the Regulations do provide for confidentiality to be invoked where the party concerned expresses a special interest in keeping part of the file confidential. For general information on confidentiality see the Guidelines Part A, General rules, Section 1, Means of communication, time limits, paragraph 3.1.6, Confidentiality. For more information on claiming special interest and on the examination process of confidential information, see the Guidelines

text: Part E, Register operations, Section 5, Inspection of files, paragraph 4.3.4, Parts of the file for which the party concerned expressed a special interest in keeping confidential. When the mark has been subject to multiple successive transfers and/or changes of the proprietor’s name that have not been previously registered in the register, it is sufficient to submit the chain of evidence showing the events leading to the relationship between the original proprietor and the new proprietor without the need to file separate individual applications for each change. When the transfer of the mark is the consequence of the transfer of the whole of the undertaking of the original proprietor, documents showing the transfer or assignment of the whole undertaking must be submitted. When the transfer is due to a merger or another universal succession, the original proprietor will not be available to sign the application for registration of transfer. In this case, the application must be accompanied by supporting documents that prove the merger or universal succession, such as extracts from the trade register. When the transfer of the mark is a consequence of a right in rem, a levy of execution or insolvency proceedings, the original proprietor will not be able to sign the application for registration of transfer. In these cases, the application must be accompanied by a final decision issued by a competent national authority transferring the ownership of the mark to the beneficiary. It is not necessary to legalise supporting documents nor to submit the original of a document. Original documents become part of the file and, therefore, cannot be returned to the person who submitted them. Simple photocopies are sufficient. If the Office has reason to doubt the accuracy or veracity of the document, it may require additional proof. When dealing with a request for transfer, the Office’s competence is, in principle, confined to examining the formal requirements set out in Article 20 EUTMR and Article 13 EUTMIR (Article 31 EUDR and Article 9 EUDIR) and does not imply an assessment of substantive issues that may arise under the applicable national law (22/09/2021,

text: , Henry Cotton’s and Henry Cotton’s (fig.), EU:T:2021:610, § 62; 22/09/2021,

text: , Marina yachting, EU:T:2021:609, § 61). The Office will examine the documents only to the extent that they actually confirm what is indicated in the application, namely the identity of the EUTMs or EUDs concerned and the identity of the parties, and whether a transfer is involved. The Office does not consider or rule on contractual or legal questions arising under national law (09/09/2011,

text: , CRAIC, EU:T:2011:450, § 27 and 07/03/2023,

text: , Diego maradona, EU:T:2023:710). If doubts arise, the national courts deal with the legality of the transfer itself. However, the duty of diligence on the side of the Office requires taking into account facts that may have implications for the legality of the registration of a transfer, such as the existence of insolvency proceedings at the national level as mentioned in paragraph 4.4.4. (22/09/2021,

text: , Marina yachting, EU:T:2021:609, § 68;

text: 4.5.1 Translation of proof

text: The evidence must be: 1. in the language of the Office that has become the language of the proceedings for the registration of the transfer; or 2. in any official language of the European Union other than the language of the proceedings. In this case, the Office may require a translation of the document into a language of the Office to be submitted within a period specified by the Office. Where the supporting documents are submitted in an official language of the European Union that is not the language of the proceedings, the Office may require a translation into that language. The Office will set a time limit to submit the translation. If the translation is not submitted within the time limit, the document will not be taken into account and will be considered not to have been submitted.

text: 4.6 Procedure to remedy deficiencies

text: The Office will inform the applicant for registration of the transfer in writing of any deficiencies in the application. If the deficiencies are not remedied within the time limit established in that communication, the Office will reject the application for registration of the transfer. .

text: 4.7 Collective and Certification marks (EUTMs only)

text: The Office’s practice in dealing with requests for transfer of EU collective marks and EU certification marks follows the principle that any new proprietor of an EU collective

text: mark or EU certification mark should comply with the same initial requirements the original proprietor was obliged to comply with at the time of filing of the EUTM. It is understood therefore, that where a request for transfer is submitted in relation to an EU collective mark or an EU certification mark, in addition to the requirements and the documents duly establishing the transfer (Article 20(5) EUTMR), the Office will require the assignee to submit amended regulations of use (Articles 75, 79, 84 and 88 EUTMR). Specifically for EU certification marks, the applicant has to include in the regulations of use a declaration clearly specifying that the conditions of Article 83(2) EUTMR are fulfilled. If these documents are not attached to the application for registration of the transfer, or if they do not comply with the requirements of Articles 75, 79, 84 and 88 EUTMR, a deficiency will be raised pursuant to Article 20(7) EUTMR, and in the event the deficiency is not remedied, the application for the registration of the transfer will be refused. For more information on the formal requirements of EU collective marks and EU certification marks, and on the content and requirements of the regulations of use, see the Guidelines, Part B, Examination, Section 2, Formalities, paragraphs 8.2 and 8.3.

text: 5 Partial Transfers (EUTMs only)

text: Article 14 EUTMIR

text: A partial transfer concerns only some of the goods and services in the EUTM and is only applicable to EUTMs (not to EUDs). It involves the distribution of the original list of goods and services between the remaining EUTM and a new one. When partial transfers are involved, the Office uses particular terminology to identify the marks. At the beginning of the proceedings there is the ‘original’ mark. This is the mark for which a partial transfer has been applied. After the registration of the transfer, there are two marks: one is a mark that now has fewer goods and services, and is called the ‘remaining’ mark, and one is a ‘new’ mark that has some of the goods and services from the original mark. The ‘remaining’ mark retains the EUTM number of the ‘original’ mark while the ‘new’ mark has a new EUTM number. Transfer cannot affect the unitary character of the EUTM. Therefore, an EUTM cannot be ‘partially’ transferred for some territories. When there are doubts as to whether the transfer is partial or not, the Office will inform the applicant for registration of the transfer and invite it to make the necessary clarifications.

text: Partial transfers may also be involved when the application for registration of the transfer concerns more than one EUTM. The following rules apply for each EUTM included in the application.

text: 5.1 Rules on the distribution of the lists of goods and services

text: Articles 33 and 49 EUTMR

text: Communication No 1/2016 of the President of the Office of 08/02/2016

text: In the application for registration of a partial transfer, the goods and services to which the partial transfer relates must be indicated (the list of goods and services for the ‘new’ registration). The goods and services must be distributed between the original EUTM and the new EUTM so that the goods and services in the original EUTM and the new one do not overlap. The two specifications taken together must not be broader than the original specification. Therefore, the indications must be clear, precise and unequivocal. For example, when an EUTM for goods or services in several classes is involved, and the ‘split’ between the original and new registration concerns entire classes, it is sufficient to indicate the respective classes for the new registration or for the remaining one. When the application to register a partial transfer indicates goods and services that are explicitly mentioned in the original list of goods and services, the Office will automatically retain, in the original EUTM, the goods and services that are not mentioned in the application to register the partial transfer. For example, the original list contains goods A, B and C, and the transfer application relates to C; the Office will keep goods A and B in the original registration and create a new registration for C. For further details concerning the scope of the list of goods and services, and for the Office’s practice regarding the interpretation of general indications of the Nice Classification class headings, please see the Guidelines, Part B, Examination, Section 3, Classification, and Communication No 1/2016 of the President of the Office of 08/02/2016 concerning the implementation of Article 28 EUTMR (now Article 33 EUTMR), and the Annex thereto. In all cases, it is highly recommended to file a clear and precise list of goods and services to be transferred together with a clear and precise list of goods and services to remain in the original registration. Furthermore, the original list must be clarified. For example, if the original list related to alcoholic beverages and the transfer relates to whisky and gin, the original list must be amended by restricting it to alcoholic beverages, except whisky and gin.

text: 5.2 Procedure to remedy deficiencies

text: When the application for registration of a partial transfer does not comply with the rules explained above, the Office will invite the applicant to remedy the deficiency. If the deficiencies are not remedied, the Office will reject the application for registration of a partial transfer. The party concerned may file an appeal against the decision.

text: 5.3 Creation of a new EUTM

text: A partial transfer leads to the creation of a new EUTM. For this new EUTM, the Office will establish a separate file, which will consist of a complete copy of the electronic file of the original EUTM, the application for registration of a transfer, and all the correspondence related to the application for registration of the partial transfer. The new EUTM will be given a new file number. It will have the same filing date and, where applicable, date of priority as the original EUTM. As far as the original EUTM is concerned, the Office will include a copy of the application for registration of a transfer in its files, but will not normally include copies of the further correspondence relating to the transfer application.

text: 6 Transfer during the course of other proceedings and fees issues

text: Without prejudice to the right to act from the time when the application for registration of a transfer is received by the Office where time limits are involved, the new proprietor will automatically become party to any proceedings involving the EUTM or EUD in question from the time the transfer is registered. The filing of an application for registration of a transfer has no effect on time limits already running or established by the Office, including time limits for the payment of fees. New time limits for payment will not be established. From the date of registration of the transfer, the new proprietor becomes liable to pay any fees due.

text: Therefore, it is important that, during the period between the filing of the application for registration of a transfer and the Office’s confirmation of its actual entry in the EUTM or EUD Register or in the file, the original proprietor and the new proprietor actively collaborate in the communication of time limits and correspondence received during inter partes proceedings. The above also applies to the time limit for paying renewal fees. Given the fixed deadlines for both timely and late payment of renewal fees, as well as the consequences of non-renewal on the validity of an EUTM or EUD, the examination of a renewal request will take precedence over a request for transfer, even if the latter was submitted earlier.

text: 6.1 Specific issues of partial transfers (EUTMs only)

text: In cases of partial transfers, the new EUTM will be at the same procedural stage as the original (remaining) EUTM. Any time limit still pending for the original EUTM will be considered to be pending for both the remaining and the new EUTM. After registration of the transfer, the Office will treat each EUTM separately and will decide on them separately. When an EUTM is subject to the payment of fees and these fees have been paid by the original proprietor, the new proprietor will not be liable to pay any additional fees for the new EUTM. The relevant date is the entry date of the transfer in the EUTM Register. Therefore, when the fee for the original EUTM is paid after an application for registration of a transfer has been filed but before the registration of the transfer itself, no additional fees are due.

text: Annex I A(3) and (4), Annex I A(7) and (8) EUTMR

text: When the partial transfer involves an EUTM application and class fees have not yet been paid or have not been paid in full, the Office will proceed to register the transfer in the files of the remaining EUTM application and to create a new EUTM application as described above. Where additional class fees have to be paid for an EUTM application, the examiner will deal with such cases after creating a new EUTM application, as described below. When additional class fees were paid prior to registering the transfer but no additional class fees were due for the remaining EUTM application, no reimbursement will be made because the fees were paid correctly at the time of payment. In all other cases, the examiner will treat the remaining EUTM application and the new one separately, but will not require an additional basic fee to be paid for the new EUTM application. Class fees for the remaining EUTM application and for the new one

text: will be determined according to the situation after the registration of the transfer. For example, when the original EUTM application had seven classes and, after the transfer, the remaining EUTM application has only one class while the new EUTM application has six, no additional class fees will be due for the remaining EUTM application, but the corresponding additional class fees must be paid for the new EUTM application. When some of the goods and services of a particular class are transferred and others are not, the fees for that class become payable for both the remaining EUTM application and the new one. When a time limit already set to pay additional class fees has not yet expired, it will be set aside by the Office to allow the determination to be made according to the situation after the registration of the transfer.

text: When the application for registration of a partial transfer relates to an EUTM registration that is due for renewal, that is, within 6 months prior to the expiry of the original registration and up to 6 months after that expiry, the Office will proceed to register the transfer and deal with the renewal and renewal fees as described below.

text: When no request for renewal has been submitted and no fees have been paid prior to the registration of the transfer, the general rules, including the rules relating to the payment of fees, are applicable to both the remaining EUTM registration and the new one (separate requests, separate payment of fees, as necessary). When a request for renewal has been submitted prior to the registration of the transfer, that request is also valid for the new EUTM. However, while the original proprietor remains a party to the renewal proceedings for the remaining EUTM, the new proprietor automatically becomes party to the renewal proceedings for the new registration. When a request for renewal has been filed but the relevant fees have not been paid prior to the registration of the transfer, the fees to be paid are determined according to the situation after the registration of the transfer. This means that both the proprietor of the remaining EUTM and the proprietor of the new EUTM must pay the basic renewal fee and any class fees. When a request for renewal has been filed prior to the registration of the transfer and all the applicable renewal fees have been paid prior to this date, no additional renewal fees are due after the registration of the transfer. No reimbursement is made of any class fees already paid.

text: 6.2 Transfer and inter partes proceedings

text: When an application for registration of a transfer is filed during inter partes proceedings, several different situations can arise. For earlier EUTMs or EUDs on which the opposition/cancellation is based, the new proprietor can only become party to the proceedings (or file observations) once the application for registration of the

text: 7 Entry in the Register, Notification and Publication

text: 7.1 Publication and entry in the Register

text: Decision No EX-26-07 of the Executive Director of the Office of 1 July 2026 on the Register of EU trade marks, the Register of EU designs, the database of proceedings before the Office, and on the case-law database and its Annexes I and II. The Office will enter the transfer in the EUTM or EUD Register and publish it in the Bulletin.

text: 7.2 Notification

text: The Office will notify the applicant of the registration of the transfer. When the application for registration of the transfer was filed by the new proprietor (assignee), the Office will also inform the original proprietor (assignor) of the registration of the transfer.

text: 8 Transfers for international trade marks

text: The Madrid System allows for the recording of a ‘change of ownership’ of an international registration. All requests to record a change in ownership must be submitted on form MM5: directly to the International Bureau by the recorded holder; or

text: through the office of the contracting party of the recorded holder or through the

text: office of a contracting party in respect of which the transfer is granted; or through the office of the contracting party of the new proprietor (transferee).

text: The request to record a transfer cannot be submitted directly to the International Bureau by the new proprietor. The Office’s own application form should not be used.

text: Detailed information on changes in ownership can be found in paragraph 597 and the following ones of the Guide to the Madrid System. See also the Guidelines, Part M, International Marks.

text: Part E Register operations Section 3 EUTMs and EUDs as objects of property Chapter 2 Licences, rights in rem, levies of execution, insolvency proceedings, entitlement proceedings or similar proceedings

text: 1 Introduction

text: Regulation (EU) 2015/848

text: of the European Parliament and of the Council of 20 May 2015 on insolvency proceedings

text: Decision No EX‑26‑07 of the Executive Director of the Office of 1 July 2026 on the Register of EU trade marks, the Register of EU designs, the database of proceedings before the Office, and on the case-law database

text: This section of the Guidelines deals with the procedures for registering, cancelling or modifying licences, rights in rem, levies of execution and insolvency proceedings or similar proceedings. Unless otherwise provided, the practice applicable to registered European Union trade marks (EUTMs) is also applicable to EUTM applications. Similarly, the practice applicable to registered European Union designs (EUDs) is also applicable to applications for an EUD. The provisions in the EUDR and EUDIR dealing with design licences, rights in rem concerning designs, levies of execution concerning designs, and insolvency and similar proceedings concerning designs are almost identical to the corresponding provisions of the EUTMR, EUTMDR and EUTMIR. Exceptions and specific provisions for EUDs are detailed in paragraph 8. Specific procedures for international trade marks are laid down in paragraph 9.

text: 1.1 Definition of licence contracts

text: A licence is a contract by virtue of which the proprietor of an EUTM or EUD (the licensor), whilst retaining ownership, authorises a third person (the licensee) to use the trade mark or design 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 to use the EUTM or EUD arise from a contractual relationship with the proprietor. The proprietor’s consent to, or tolerance of, a third party using the trade mark or design does not amount to a licence.

text: 1.2 Definition of rights in rem

text: A right in rem or ‘real right’ is a limited property right that is an absolute right. Rights in rem refer 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

text: specific object. They may consist, inter alia, in use rights, usufruct or pledges. ‘In rem’ is different from ‘in personam’, which means directed toward a particular person. The most common rights in rem for trade marks or designs are pledges or securities. They secure the repayment of a debt of the proprietor of the trade mark or design (i.e. the debtor) in such a way that, where the proprietor cannot repay the debt, the creditor (i.e. the owner of the pledge or security) may receive repayment of the debt by, for example, selling the trade mark or design. There are two types of right in rem for which the applicant can request entry in the EUTM or EUD Register: rights in rem that serve the purpose of guaranteeing securities (pledge, charge,

text: etc.); rights in rem that do not serve as a guarantee (usufruct).

text: 1.3 Definition of levies of execution

text: 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 the property of the debtor, including from its trade mark or design rights.

text: 1.4 Definition of insolvency proceedings or similar proceedings

text: For the purposes of these Guidelines, ‘insolvency proceedings’ are understood to be the collective proceedings that entail the partial or total divestment of a debtor and the appointment of a liquidator. They may include winding up by, or under the supervision of, a court, creditors’ voluntary winding up (with confirmation by the court), administration, voluntary arrangements under insolvency legislation and bankruptcy. ‘Liquidator’ is understood as any person or body whose function is to administer

text: or liquidate assets of which the debtor has been divested or to supervise the administration of their affairs, and may include liquidators, supervisors of a voluntary arrangement, administrators, official receivers, trustees and judicial factors. ‘Court’ is understood to be the judicial body or any other competent body of a

text: Member State empowered to open insolvency proceedings or to take decisions in the course of such proceedings. ‘Judgment’, in relation to the opening of insolvency proceedings or the appointment

text: of a liquidator, is understood to include the decision of any court empowered to open such proceedings or to appoint a liquidator. For terminology in other territories, see

text: Regulation (EU) 2015/848

text: on insolvency proceedings.

text: 1.5 Applicable law

text: The EUTMR and the EUDR do not establish unified and complete provisions applicable to licences, rights in rem or levies of execution for EUTMs or EUDs. Alternatively,

text: Article 19

text: EUTMR and

text: Article 30

text: EUDR refer to the law of a Member State regarding the acquisition, validity and effects of the EUTM or EUD as an object of property and regarding the procedure for levies of execution. In this context, a licence, right in rem or a levy of execution for an EUTM or EUD is, in its entirety and for the whole territory of the European Union, assimilated to a licence, right in rem, or to a levy of execution for a trade mark or design registered in the Member State in which the proprietor has its seat or domicile. If the proprietor does not have a seat or domicile in a Member State, it will be dealt with as a licence, right in rem or levy of execution for a trade mark or design registered in the Member State where the proprietor has an establishment. If the proprietor does not have an establishment in a Member State, it will be dealt with as a licence, right in rem or a levy of execution for a trade mark or design registered in the Member State where the Office has its seat, namely Spain. This, however, applies only to the extent that

text: Articles 20

text: to 28 EUTMR and

text: Articles 31

text: to 40 EUDR do not provide otherwise.

text: Article 19

text: EUTMR and

text: Article 30

text: EUDR are limited to the effects of a licence or right in rem as an object of property and do not extend to contract law. These articles do not govern the applicable law or the validity of a licensing contract or right in rem contract. Consequently, the freedom of the contracting parties to submit the licensing contract or the right in rem contract to a given national law is not affected by the EUTMR or EUDR. Furthermore, these Guidelines serve to explain the procedure before the Office for registering the opening, modification or closure of insolvency proceedings or similar proceedings. In accordance with

text: Article 19

text: EUTMR and

text: Article 30

text: EUDR, all other provisions are covered by national law. Moreover,

text: Regulation (EU) 2015/848

text: regulates the provisions on jurisdiction, recognition and applicable law in the area of insolvency proceedings. The regulations specifically state that an EUTM or EUD may only be involved in insolvency proceedings opened in the Member State where the debtorʼs centre of main interests is located. An example of an exception is when the debtor is an insurance undertaking or credit institution, in which case the EUTM or EUD may only be involved in those proceedings 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,

text: therefore, ascertainable by third parties (for further information on the ‘centre of main interests’ see

text: Article 3(1) of Regulation (EU) 2015/848

text: ). Furthermore,

text: Article 2(8) of Regulation (EU) 2015/848

text: states that insolvency proceedings commence at ‘the time at which the judgment opening insolvency proceedings becomes effective, regardless of whether the judgment is final or not’. The entry in the Register is not, therefore, dependent on the judgment having become final.

text: 1.6 Advantages of registration

text: Entry in the EUTM or EUD Register of a licence agreement, a right in rem, a levy of execution, or the opening, modification and closure of insolvency proceedings is not compulsory. However, such registration has particular advantages. 1. It allows third parties to consult the full details of any of these proceedings through an application for inspection of files (Guidelines, Part E, Register operations, Section 5, Inspection of files, paragaph 4, Inspection of files). 2. In view of the provision of

text: Article 27(1)

text: EUTMR and

text: Article 38(1)

text: EUDR, licences and rights in rem will have affect vis-à-vis third parties who might have acquired, or have entered in the Register, rights in the trade mark or design that are incompatible with the registered licence or right in rem. The licensee or pledgee respectively may avail themselves of the rights conferred by this licence or right in rem only: ○ if it was entered in the Register; or ○ if the third party acquired their rights after the date of these legal acts and with full knowledge of the existence of the licence or right in rem. 3. Where a licence or a right in rem is entered in the Register, the surrender of that mark or design by its proprietor will only be entered in the Register if the proprietor can prove that it has informed the licensee or pledgee respectively of its intention to surrender. The holder of a licence or the pledgee of a right in rem that is registered therefore has the right to be informed in advance by the proprietor of the trade mark or design of their intention to surrender. 4. On entry in the Register of insolvency proceedings or a levy of execution, the proprietor loses their right to act and, therefore, may not perform any actions before the Office (such as withdraw, surrender, transfer, act in inter partes proceedings).

text: 5. Where a licence, right in rem, levy of execution or insolvency proceedings for, or against, an EUTM or EUD is entered in the Register, the Office will notify the licensee, pledgee, beneficiary or liquidator, respectively, of the approaching expiry of the registration at least six months beforehand.

text: 6. Registering licences, rights in rem, levies of execution and insolvency proceedings (and their modification and/or cancellation, where applicable) is important for maintaining the veracity of the EUTM and EUD Registers, particularly in the event of inter partes proceedings. However, 1. when a party to proceedings before the Office has to prove use of an EUTM, if such use has been made by a licensee, it is not necessary for the licence to have been entered in the EUTM Register for that use to be considered to be use with the proprietor’s consent pursuant to

text: Article 18(2)

text: EUTMR; 2. registration is not a condition for considering the use of a trade mark by a pledgee under the terms of the right in rem contract to have been made with the consent of the proprietor pursuant to

text: Article 18(2)

text: EUTMR; 3. the Office strongly recommends that liquidators duly inform the Office of the withdrawal, surrender or transfer of EUTMs or EUDs subject to insolvency proceedings prior to the final winding up.

text: 2 Requirements for an Application for Registration of a Licence, Right in Rem, Levy of Execution, and Insolvency Proceedings

text: The application for registration of a licence, a right in rem, a levy of execution, or insolvency proceedings must comply with the following conditions.

text: 2.1 Application form

text: Article 65

text: EUTMDR

text: Article 18

text: EUDDR

text: It is strongly recommended that the application for registration of a licence, a right in rem, a levy of execution or insolvency proceedings for an EUTM be submitted electronically via the Office’s website (e-recordals). An application concerning an EUD can only be submitted electronically. For more information, see the Guidelines, Part A, General rules, Section 1, Means of communication, time limits, paragraph 3.1.

text: A single application for the registration of a licence for two or more EUTMs or EUDs may be made only if the registered proprietor and the licensee are the same and the contracts have the same conditions, limitations and terms in each case (see paragraph 2.5). A single application for the registration of a right in rem or a levy of execution for two or more registered EUTMs or EUDs may be submitted only if the registered proprietor and beneficiary are the same in each case.

text: 2.2 Languages

text: The application for the registration of a licence, a right in rem, a levy of execution, or insolvency proceedings for an EUTM or EUD application must be made in the first or second language of the application. The application for the registration of a licence, a right in rem, a levy of execution, or insolvency proceedings for an EUTM or EUD registration must be submitted in one of the five languages of the Office, namely, English, French, German, Italian or Spanish. For more information on languages and the use of forms, see the GuidelinesPart A, Section 4, Language of Proceedings, paragraph 1, Introduction. For more information on translations, see the GuidelinesPart A, Section 4, Language of Proceedings, paragraph 7, Translations and their Certification.

text: 2.3 Fees

text: The application for the registration of a licence, a right in rem or a levy of execution is considered not to have been made until the fee is paid. The amount of this fee is EUR 200 for each EUTM or EUD for which the registration is requested. However, where several registrations of licences, rights in rem or levies of execution have been applied for in one single application and the registered proprietor and the licensee (and contractual terms), pledgee, or beneficiary are the same in all cases, the fee is limited to a maximum of EUR 1 000. The same maximum amount applies where several registrations of licences, rights in rem or levies of execution are applied for at the same time, provided that they could have been filed in one single application and that the registered proprietor and the licensee, pledgee or beneficiary are the same in all cases. Furthermore, for the

text: registration of licences or rights in rem, the contractual terms must be the same. For example, an exclusive licence and a non-exclusive licence cannot be filed in the same application, even if they are between the same parties. Once the corresponding fee has been paid, it will not be reimbursed if the application for registration is refused or withdrawn. There is no fee for registering insolvency proceedings or similar proceedings. Where the fee has not been received, the Office will notify the applicant that the application is deemed not to have been filed. However, a new application may be submitted at any time, provided that the correct fee is paid from the outset.

text: 2.4 Parties to the proceedings

text: 2.4.1 Applicants

text: An application for the registration of a licence, of a right in rem or of a levy of execution at the Office may be filed by: 1. the proprietor(s); or 2. the proprietor(s) jointly with the licensee(s)/pledgee(s)/beneficiary(ies); or 3. the licensee(s)/pledgee(s)/beneficiary(ies). Where the Office receives documents relating to such existing rights on EUTMs or EUDs from third parties or authorities such as national Registers or national Courts, it will forward the documents to the proprietor with a notice indicating that such a right could be entered in the EUTM or EUD Register upon request and payment of the relevant fees. Additionally, if the rights holder (pledgee or beneficiary) is fully identified by its contact details, the same notice will also be sent, for information only, to the pledgee(s)/beneficiary(ies). The document will be incorporated into the files relating to the EUTM or EUD affected. The application for the registration of insolvency proceedings may be requested by: 1. a Court, or 2. competent national authorities, including the liquidator in the insolvency proceedings; or 3. any of the parties.

text: 2.4.2 Mandatory indications concerning the EUTM/EUD and the licensee, pledgee, beneficiary or liquidator

text: The application for registration of a licence, a right in rem, a levy of execution or insolvency proceedings must contain the following information: 1. The registration number of the EUTM or EUD concerned. If the application relates to several EUTMs or EUDs, each of the registration numbers must be indicated. Additionally, for insolvency proceedings, the Office will register the insolvency proceedings against all EUTMs/EUDs linked to the proprietor’s ID number at the Office. Where the proprietor is the joint proprietor of an EUTM or EUD, the insolvency proceedings will apply to the share of the joint proprietor. 2. The details of the licensee, pledgee, beneficiary or liquidator. These details correspond to those indications required for an applicant for a new EUTM or EUD application. For more information on the identification requirements of the applicant, see the GuidelinesPart A, Section 5 Parties to the Proceedings and Professional Representation, Paragraph 3 Identification of parties to the proceedings. 3. If the licensee, pledgee, beneficiary or liquidator designates a representative, the representative’s name and ID number assigned by the Office. If the representative has not yet been assigned an ID number, the business address must be indicated. In insolvency proceedings, a liquidator, once nominated, will assume the capacity to act on behalf of the bankrupt person and may — or (in the case of mandatory representation) must — appoint a new representative, or else confirm the appointment of the existing representative. For more information on who may act as a representative and the appointment of a representative, see the GuidelinesPart A, Section 5 Parties to the Proceedings and Professional Representation, paragraph 4 Who may represent and paragraph 5 Appointment of a Professional Representative.

text: 2.4.3 Signatures

text: Article 17

text: EUDDR

text: The general rules on signatures apply.

text: For information on the requirements of signatures and explanations regarding the distinctions between signatures in applications or in supporting evidence, see the Guidelines Part A, General Rules, Section 1, Means of Communication, Time Limits, paragraph 3.1.5, Signature.

text: 2.4.4 Representation

text: 2.4.5 Proof

text: Articles

text: and

text: EUTMDR

text: Article 88

text: EUDR

text: The Office will examine the supporting documents only to the extent that they actually confirm what is indicated in the application, namely the identity of the EUTMs or EUDs concerned and the identity of the parties, and whether a licence, right in rem, levy of execution or insolvency proceeding is involved. Regarding confidentiality, the party submitting the proof must bear in mind that the content of these files are available for public inspection. This is particularly relevant where contracts or other documents are submitted as evidence for a licence, right in rem and levy of execution, as they may contain sensitive data. Consequently, certain information may be blacked out before being submitted to the Office, or certain pages may be omitted altogether. For general information on confidentiality, see the Guidelines, Part A, General rules, Section 1, Means of communication, time limits, paragraph 3.1.6, and for more information on claiming special interest and on the examination process of confidential information, see the Guidelines, Part E, Register operations, Section 5, Inspection of files, paragraph 4.3.4. For the special provisions and specific requirements with regard to proof, see the paragraphs below. These give details based on the type of right being registered: paragraph 4.1 for licences; paragraph 5.1 for rights in rem; paragraph 6.1 for levies of execution; paragraph 7.1 for insolvency proceedings.

text: 2.4.6 Translation of proof

text: Article 15

text: EUDIR

text: Proof must be as follows. 1. In the language of the Office that has become the language of the proceedings for the registration of the licence, right in rem, levy of execution or insolvency proceedings, see paragraph 2.2 above. 2. Or in any official language of the European Union other than the language of the proceedings. In this case, the Office may require a translation of the document into a language of the Office to be submitted within a period specified by the Office. The Office will set a time limit for submission of the translation. If the translation is not submitted within that time limit, the document will not be taken into account and will be considered not to have been submitted.

text: 2.5 Examination of the application for registration

text: For insolvency proceedings, the Office will check that there are no other pending recordals and that no insolvency proceedings have already been registered for the proprietor concerned. The Office will check whether the application for registration complies with the formal conditions mentioned in paragraph 2.4 above and with the specific requirements given below, based on the type of right being registered (see paragraph 4.1 for licences, paragraph 5.1 for rights in rem, paragraph 6.1 for levies of execution, and paragraph 7.1 for insolvency proceedings). The Office will check whether the application for registration of the licence, right in rem, levy of execution or insolvency proceedings has been duly signed. Where the application is signed by the licensee’s, pledgee’s, beneficiary’s or liquidator’s representative, an authorisation may be required by the Office or, in the case of inter partes proceedings, by the other party to the proceedings. In this case, if no authorisation is submitted, the proceedings will continue as if no representative had been appointed. Where the application for registration of the licence, right in rem, insolvency proceedings or levy of execution is signed by the representative that has already

text: been designated as the proprietor’s representative for the EUTM or EUD in question, the requirements relating to signatures and authorisations are fulfilled. The Office will notify the applicant of any deficiencies. If the deficiencies are not remedied within the period established, the Office will reject the application for registration of the right. For additional specific formalities that concern only licences and rights in rem, see the special provisions below (paragraphs 4.3 and 4.4 for licences, and paragraph 5.2 for rights in rem).

text: 3 Procedure for cancelling or modifying the registration of licences and other rights

text: The registration of a licence, a right in rem, a levy of execution or insolvency proceedings will be cancelled or modified at the request of an interested party, that is, the applicant or proprietor of the EUTM or the EUD or the registered licensee, pledgee, beneficiary or liquidator. In insolvency proceedings, it may also be the relevant national authority or court. A registration of a licence or right in rem may also be transferred (see paragraph 4.6 for licences and paragraph 5.4 for rights in rem). The application should make a clear distinction between a request for modification and a request for transfer. The Office will refuse the cancellation, transfer and/or modification of a licence, sublicence or right in rem if the main licence or right in rem has not been entered in the EUTM or EUD Register.

text: 3.1 Competence, languages, presentation of the request

text: Article 65

text: EUTMDR

text: Articles

text: and

text: EUDR

text: Article 18

text: EUDDR

text: It is strongly recommended that requests for cancellation or modification of a licence, right in rem, levy of execution or insolvency proceedings for an EUTM be submitted electronically via the Office’s website (e-recordals). Any application for a EUD can only be submitted electronically. Paragraphs 2.1 and 2.2 above apply.

text: Parties to the proceedings may also use WIPO Model International Form No 1, ‘Request for Amendment/Cancellation of Recordal of License’, (found in the annex to the Joint Recommendation concerning trademark licenses adopted by the Assembly of the Paris Union and the General Assembly of WIPO on 25/09/2000 to 03/10/2000), which can be downloaded at http://www.wipo.int/edocs/pubdocs/en/ marks/835/pub835.pdf, or a form with a similar content and format.

text: 3.2 Applicant for a cancellation or modification request

text: Requests for cancellation or modification of a registration may be submitted by the same parties who can file applications for registration (see paragraph 2.4.1 above).

text: 3.2.1 Licences

text: 3.2.1.1 Cancellation of a registered licence

text: In the case of a joint request submitted by the licensor (EUTM or EUD proprietor) and the licensee, or of a request submitted by the licensee, no proof of the cancellation of the licence is required, since the request itself implies a statement from the licensee that it consents to the cancellation of the registration of the licence. However, a request for cancellation submitted by the licensor alone must be accompanied by proof that the registered licence no longer exists, or by a declaration from the licensee to the effect that it consents to the cancellation. If the licensor alleges fraud on the part of the licensee, it must submit a final decision of the competent authority to this effect. It is not within the remit of the Office to carry out any investigation in that respect. Where several licences were requested simultaneously, it is possible to cancel them individually. The entry in the EUTM or EUD Register of licences that are limited in time, that is, temporary licences, does not automatically expire but must be cancelled from the Register.

text: 3.2.1.2 Modification of a registered licence

text: In the case of a joint request from the licensor and the licensee, no further proof of the modification of the licence is required. If the request is made by the licensor, proof of the modification of the licence is required only where the modification for which entry in the EUTM or EUD Register is requested is of such a nature that it would diminish the rights of the registered licensee under the

text: licence. For example, this would be the case if the licensee’s name were to change, if an exclusive licence were to become a non-exclusive licence, or if the licence were to become restricted regarding its territorial scope, the period of time for which it is granted, or the goods or services to which it applies. If the request is made by the registered licensee, proof of the modification of the licence is required only where the modification for which entry in the EUTM or EUD Register is requested is of such a nature that it would extend the rights of the registered licensee under the licence. For example, this would be the case if a nonexclusive licence were to become an exclusive licence, or if any registered restrictions of the licence as to its territorial scope, the period of time for which it is granted, or the goods or services to which it applies, were to be cancelled fully or in part. Where proof of the modification of the licence is necessary, it is sufficient if any of the documents referred to in paragraph 4.1.4 below are submitted, subject to the following requirements: The written agreement must be signed by the other party to the licence contract and

text: must relate to the registration of the modification of the licence as requested. The request for modification or cancellation of a licence must indicate how the

text: licence has been modified. The copy or extract of the licence agreement must be of the licence as modified.

text: 3.2.2 Rights in rem

text: 3.2.2.1 Cancellation of the registration of a right in rem

text: If the pledgor (EUTM or EUD proprietor) and the pledgee submit a joint request, or if the pledgee alone submits a request, no proof of the cancellation of the registration of the right in rem is required, since the request itself implies a statement by the pledgee that it consents to the cancellation. When the request for cancellation is submitted by the pledgor, it must be accompanied by proof that the registered right in rem no longer exists, or by a declaration by the pledgee that it consents to the cancellation. Where the registered pledgee submits the request for cancellation by itself, the pledgor will not be informed thereof. Where the registration of several rights in rem was requested simultaneously, it is possible to cancel them individually.

text: 3.2.2.2 Modification of the registration of a right in rem

text: If the pledgor and the pledgee submit a joint request, no further proof of the modification of the registration of the right in rem is required. If the request is submitted by the pledgor or the pledgee, proof of the modification of the registration of the right in rem is required.

text: Where proof of the modification of the registration of the right in rem is necessary, it is sufficient if any of the documents referred to in paragraph 5.1.4 below are submitted, subject to the following requirements: The written agreement must be signed by the other party to the right in rem

text: agreement and must relate to the registration of the modification of the right in rem as requested. The request for modification or cancellation of the registration of a right in rem must

text: show the right in rem in its modified form. The copy or extract of the right in rem agreement must show the right in rem in its

text: modified form.

text: 3.2.3 Levies of execution

text: 3.2.3.1 Cancellation of the registration of a levy of execution

text: A request for cancellation of the registration of a levy of execution must be accompanied by proof that the registered levy of execution no longer exists. This proof comprises the final decision of the competent authority. 3.2.3.2 Modification of the registration of a levy of execution

text: A levy of execution may be modified on submission of the corresponding final decision of the competent authority showing such modification.

text: 3.2.4 Insolvency proceedings

text: 3.2.4.1 Cancellation of the registration of an insolvency

text: A request for the cancellation of the registration of insolvency proceedings must be accompanied by proof that the registered insolvency no longer exists. This proof comprises the final decision of the competent authority. 3.2.4.2 Modification of the registration of an insolvency

text: The registration of insolvency proceedings may be modified on submission of the corresponding final decision of the competent authority showing such modification.

text: 3.3 Contents of the request

text: Article 12

text: EUTMIR

text: Paragraph 2.4 above applies, except that the data concerning the licensee, pledgee, beneficiary or liquidator do not need to be indicated except in the case of a modification of the registered licensee’s, pledgee’s, beneficiary’s or liquidator’s name. Paragraph 4.2 below applies if a modification of the scope of a licence is requested, for example, if a licence becomes a temporary licence or if the geographical scope of a licence is changed.

text: 3.4 Fees

text: 3.4.1 Cancellation

text: For EUTMs, any request for the cancellation of licences, rights in rem and levies of execution is considered not to have been made until the fee is paid. The fee is EUR 200 for each EUTM for which cancellation is requested. However, where several requests for cancellations of licences, rights in rem and levies of execution are applied for in one single application or at the same time, and the registered proprietor and the licensee (including contractual terms), pledgee, or beneficiary are the same in all cases, the cancellation fee is limited to a maximum of EUR 1 000. This applies irrespective of how the initial applications for registration of these licences, rights in rem or levies of execution were filed. This means that, even where the initial applications for registration of these rights were staggered over time and could not, therefore, benefit from the maximum fee of EUR 1 000, they can still benefit from the maximum fee of EUR 1 000 if their cancellation is requested in the same application for cancellation. For EUDs, requests for the cancellation of licences, rights in rem, levies of execution and insolvency proceedings are not subject to a fee. Requests for cancellation of the registration of insolvency proceedings are not subject to a fee.

text: 3.4.2 Modification

text: Modification of the registration of a licence, a right in rem, a levy of execution, or insolvency proceedings is not subject to a fee.

text: 3.5 Examination of requests for cancellation or modification

text: 3.5.1 Fees

text: For EUTMs, where the required fee for a request for cancellation of a licence, a right in rem, or a levy of execution has not been received, the Office will notify the applicant that the request for cancellation is considered not to have been filed. As seen above, requests for cancellation of the registration of insolvency proceedings are not subject to a fee. For EUDs, requests for the cancellation of licences, rights in rem, levies of execution and insolvency proceedings are not subject to a fee.

text: 3.5.2 Examination by the Office

text: For the mandatory elements of the request, paragraph 2.5 above applies mutatis mutandis, including in respect of proof, to the extent that such proof is required. Additionally, specific formalities apply to licences (see paragraph 4.3 below), to rights in rem (see paragraph 5.2 below), to levies of execution (see paragraph 6.1 below) and to insolvency proceedings (see paragraph 7.1 below). The Office will notify the applicant for cancellation or modification of any deficiency, setting a time limit of two months. If the deficiencies are not remedied, the Office will reject the request for cancellation or modification. Paragraph 4.4 below applies to the extent that modification of the licence would affect its nature or its limitation to a part of the goods and services or range of products covered by the EUTM or EUD.

text: Registration of the cancellation or modification of a licence, a right in rem, a levy of execution or insolvency proceedings will be communicated to all the parties concerned.

text: 3.6 Registration and publication

text: Articles 111(3)

text: (s) and 116(1)(a) EUTMR

text: Article 104(3)

text: (t) and 107(1)(a) EUDR

text: Article 12

text: EUDIR The creation, cancellation or modification will be entered in the EUTM Register or EUD Register and published in the EUTM Bulletin or EUD Bulletin.

text: 4 Licences - Special Provisions

text: 4.1 Requirements concerning proof

text: Article 19

text: and

text: Article 26(1)

text: EUTMR

text: Articles 2(1)

text: (b) and 13(3)(a) EUTMIR Articles

text: and

text: EUDR

text: Article 1(1)

text: (a) and (b), Articles

text: and

text: (a) EUDIR

text: 4.1.1 Application made by the EUTM or EUD proprietor alone

text: When an application for the registration of a licence is made by the licensor (EUTM or EUD proprietor) alone, it must be signed by them. In the case of co-ownership, all co-owners must sign or appoint a common representative. No proof of the licence is necessary. The Office will inform the licensee when the licence is registered in the EUTM or EUD Register. The licensee may file a statement with the Office to oppose the registration of the licence. The Office will not take any further action on the statement but will register the licence. Following the registration of the licence, any licensee that disagrees with the registration of the licence may request the cancellation or modification of the licence (see paragraph 3 above). The Office will not take into account whether or not the parties, although having agreed to a licence contract, have agreed to register it at the Office. Any dispute regarding

text: the licence is a matter that must be resolved among the parties concerned under the relevant national law (

text: Article 19

text: EUTMR and

text: Article 30

text: EUDR).

text: 4.1.2 Application made jointly by the licensor and the licensee

text: When an application for the registration of a licence is made jointly by the licensor (EUTM or EUD proprietor) and its licensee, it must be signed by both the licensor and the licensee. In the case of co-ownership, all co-owners must sign or appoint a common representative. In this case, the signature of both parties constitutes proof of the licence. Where there is a formal deficiency regarding the signature of the licensee or regarding its representative, the application will still be accepted as long as it would have been acceptable if it had been presented by the licensor alone. The same applies where there is a deficiency regarding the signature of the licensor or regarding its representative, but where the application would have been acceptable if it had been presented by the licensee alone.

text: 4.1.3 Application made by the licensee alone

text: An application for the registration of a licence may also be made by the licensee alone. In this case, it must be signed by the licensee and proof of the licence must be submitted.

text: 4.1.4 Proof of the licence

text: There is sufficient proof of the licence if the application for registration of the licence is accompanied by any of the following: A declaration stating that the EUTM or EUD proprietor agrees to the registration of

text: the licence, signed by the proprietor. The consent of the proprietor is particularly pertinent in instances where a licence was granted by a predecessor in title prior to the recordal of a transfer of rights (22/11/2023,

text: , LAPLANDIA Land of purity et al., EU:T:2023:738, § 23). According to

text: Article 13(3)

text: (a) EUTMIR and

text: Article 9(3)

text: (a) EUDIR, it is also considered sufficient proof if an application for registration of the licence is signed by both parties. This case has already been dealt with in paragraph 4.1.2 above. The licence agreement, or an extract therefrom, indicating the parties and the EUTM

text: or EUD being licensed, and bearing their signatures. In many cases, the parties to the licence agreement will not wish to disclose all the details, which may contain confidential information on the licence royalties or other terms and conditions of the licence. In such cases, it is sufficient if only a part or an extract of the licence agreement is submitted, as long as it identifies the parties to the licence agreement, confirms that the EUTM or EUD in question is the subject

text: of a licence and contains the signatures of both parties. All other elements may be omitted or blacked out. An uncertified statement of licence using the complete WIPO Model International

text: Form No 1 ‘Request for Recordal of License’. The form must be signed by both the licensor and the licensee. It can be found at http://www.wipo.int/edocs/pubdocs/en/ marks/835/pub835.pdf.

text: 4.2 Optional contents of the application

text: Depending on the nature of the licence, an application for registration of the licence may contain the request to register the licence together with other indications, namely those referred to under letters a) to e) in

text: Article 26(3)

text: EUTMR and

text: Article 37(3)

text: EUDR. These indications may be individual or in any combination, for one licence (e.g. an exclusive licence limited in time) or for several licences (e.g. one exclusive licence for A as regards Member State X and another for B as regards Member State Y). They are entered in the EUTM or EUD Register by the Office only if the application for registration of the licence itself clearly requests that they be registered. Without such an explicit request, the Office will not enter in the EUTM or EUD Register any indications contained in the licence agreement that are submitted, for example, as proof of the licence. However, if entry in the Register is requested for one or more of these indications, the following details must be indicated: 1. Where an application for the registration of a licence is limited to only some of the goods or services, or to only some of the product indications for EUDs, the goods or services or the specific product range for which the licence has been granted must be indicated. 2. Where an application is for the registration of a licence as a territorially limited licence, the application must indicate 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 within a Member State. 3. Where registration of an exclusive licence is sought, a statement to this effect must be made in the application for registration. 4. Where the registration of a licence granted for a limited period of time is sought, the expiry date of the licence must be specified. Furthermore, the date of the commencement of the licence may be indicated. 5. Where the licence is granted by a licensee whose licence is already entered in the EUTM or EUD Register, the application for registration may indicate that it is for a sublicence. Sublicences cannot be registered without first registering the main licence.

text: 4.3 Examination of specific formalities (licences)

text: Where an application for the registration of a licence has been made jointly by the licensor (EUTM or EUD proprietor) and the licensee, the Office will communicate with the licensor and send a copy to the licensee. Where the application for registration of the licence is filed by the licensor alone, the Office will not inform the licensee. The Office will notify the applicant of any deficiencies in the application. If the deficiencies are not remedied within the time limit established, the Office will reject the application. Where the licensee has also signed the application, it will not be allowed to contest the existence or scope of the licence.

text: 4.4 Examination of optional elements (licences)

text: Where an application for the registration of a licence specifies that the licence be registered as one of the following: an exclusive licence;

text: a temporary licence;

text: a territorially limited licence;

text: a licence limited to certain goods or services (EUTMs) or to a certain range of

text: products (EUDs); or a sublicence,

text: the Office will examine whether the indications mentioned in paragraphs 2.4 and 4.1 above are indicated. As far as the indication ‘exclusive licence’ is concerned, the Office will accept only this term and not any other wording. If ‘exclusive licence’ is not expressly indicated, the Office will consider the licence to be non-exclusive. Where an application for registration indicates that it is for a licence limited to certain goods or services covered by the EUTM, or a specific range of products covered by the EUD, the Office will check whether these are properly grouped and are actually covered by the EUTM or EUD.

text: As far as a sublicence is concerned, the Office will check whether it has been granted by a licensee whose licence has already been entered in the EUTM or EUD Register. The Office will refuse the registration of a sublicence when the main licence has not been entered in the Register. However, the Office will not check the validity of an application for the registration of a sublicence as an exclusive licence when the main licence is not an exclusive licence. Nor will it examine whether the main licence contract excludes granting sublicences. It is the duty of the applicant for the registration of a licence not to conclude and register incompatible contracts and to request the cancellation or modification of entries in the Register that are no longer valid. For example, if an exclusive licence has been registered without limitation as to the goods and the territory, and the registration of another exclusive licence is applied for, the Office will register that second licence, even where both licences seem incompatible at first sight. Parties are, furthermore, encouraged to update all EUTM and EUD Register information regularly and swiftly by cancelling or modifying existing licences (see paragraph 3 above). If the indications mentioned in paragraph 4.2 above are missing, the Office will invite the applicant for the registration of the licence to submit the supplementary information. If the applicant does not reply to that communication, the Office will not take into account the abovementioned indications and will register the licence without mentioning them.

text: 4.5 Registration procedure and publication (licences)

text: The Office will enter the licence in the EUTM or EUD Register and publish it in the EUTM Bulletin or EUD Bulletin. Where applicable, the entry in the EUTM or EUD Register will only mention that the licence is: an exclusive licence;

text: a temporary licence;

text: a territorially limited licence;

text: a sublicence; or

text: a licence limited to certain goods or services covered by the EUTM or to a certain

text: product range covered by the EUD. The following details will not be published: the period of validity of a temporary licence;

text: the territory covered by a territorially limited contract;

text: the goods and services or product range covered by a partial licence.

text: The Office will notify the applicant for a registration of a licence of the registration thereof. When an application for registration of a licence was filed by the licensee, the Office will also inform the EUTM proprietor or EUD holder of the registration of the licence.

text: 4.6 Transfer of a Licence

text: 4.6.1 Provision for the transfer of a licence

text: A licence concerning an EUTM or an EUD may be transferred. The transfer of a licence is different from the transfer of a sublicence insofar as, in the former, the licensee loses all its rights under the licence and is replaced by a new licensee, whereas, in the case of the transfer of a sublicence, the main licence remains in force. Likewise, the transfer of a licence is different from a change of name of the licensee where no change of ownership is implied (see the Guidelines, Part E, Register Operations, Section 3, EUTMs and EUDs as Objects of Property, Chapter 1, Transfer).

text: 4.6.2 Applicable rules

text: The procedure for the registration of a transfer of a licence follows the same rules as for an application for registration of a licence. The transfer of a licence is subject to the payment of a fee. Paragraph 2.3 above applies mutatis mutandis. To the extent that a declaration by or signature of the EUTM or EUD proprietor is required in accordance with the rules, its place will be taken by a declaration by or signature of the registered licensee (the former licensee).

text: 5 Rights in Rem - Special Provisions

text: 5.1 Requirements concerning proof

text: Articles

text: and

text: EUDR

text: 5.1.1 Application submitted by the EUTM or EUD proprietor alone

text: When an application for the registration of a right in rem is made by the pledgor (EUTM or EUD proprietor) alone, it must be signed by them. In the case of co-ownership, all co-owners must sign or appoint a common representative. The signature of the pledgor constitutes proof of the right in rem. Consequently, no additional proof of the right in rem is necessary. The Office will inform the pledgee when the right in rem is registered in the EUTM or EUD Register. Where the pledgee files a statement with the Office to oppose the registration of the right in rem, the Office will forward the statement to the EUTM or EUD proprietor for information purposes only. The Office will not take any further action on the statement. Following the registration of the right in rem, any pledgee that disagrees with the registration of the right in rem may request the cancellation or modification of the registration of the right in rem (see paragraph 3 above). The Office will not take into account whether the parties have agreed to register a right in rem contract at the Office. Any dispute regarding the right in rem is a matter that must be resolved between the parties concerned under the relevant national law (

text: Article 19

text: EUTMR and

text: Article 30

text: EUDR).

text: 5.1.2 Application submitted jointly by the pledgor and the pledgee

text: When an application for the registration of the right in rem is submitted jointly by the pledgor (EUTM or EUD proprietor) and the pledgee, it must be signed by both parties. In the case of co-ownership, all co-owners must sign or appoint a common representative. In this case, the signature of both parties constitutes proof of the right in rem.

text: Where there is a formal deficiency regarding the signature of the pledgee or regarding its representative, the application will still be accepted as long as it would have been acceptable if it had been submitted by the pledgor alone. The same applies where there is a deficiency regarding the signature of the pledgor or its representative, but where the application would have been acceptable if it had been submitted by the pledgee alone.

text: 5.1.3 Application submitted by the pledgee alone

text: An application may also be submitted by the pledgee alone. In this case, it must be signed by the pledgee and proof of the right in rem must be submitted.

text: 5.1.4 Proof of the right in rem

text: There is sufficient proof of the right in rem if the application for registration of the right in rem is accompanied by any of the following: A declaration signed by the EUTM or EUD proprietor stating that it agrees to the

text: registration of the right in rem. According to

text: Article 13(3)

text: (a) EUTMIR, it is also considered sufficient proof if an application for registration of the right in rem is signed by both parties. This case has already been dealt with in paragraph 5.1.2 above. The right in rem contract, or an extract therefrom indicating the EUTM or EUD at

text: issue and the parties, and bearing their signatures. It is sufficient if the right in rem contract is submitted. In many cases, the parties to the right in rem contract will not wish to disclose all the details of the contract, which may contain confidential information about the terms and conditions of the pledge. In such cases, it is sufficient if only a part or an extract of the right in rem contract is submitted, as long as it identifies the parties to the right in rem contract and the EUTM or EUD that is subject to a right in rem, and bears the signatures of both parties. All other elements may be omitted or blacked out. An uncertified statement of a right in rem, signed by both the pledgor (EUTM or EUD

text: proprietor) and the pledgee.

text: 5.2 Examination of specific formalities requirements (rights in rem)

text: Where an application for registration of a right in rem has been submitted jointly by the pledgor (EUTM or EUD proprietor) and the pledgee, the Office will communicate with the pledgor and send a copy to the pledgee.

text: Where the pledgee has also submitted and signed the application, it will not be allowed to contest the existence or scope of the right in rem agreement within the Office’s proceedings, notwithstanding what could be established by the national laws of the Member States in this regard. If the pledgor alleges fraud on the part of the pledgee, it must provide a final decision of the competent authority to this effect. It is not up to the Office to carry out any investigation into such a claim. The Office will inform the applicant in writing of any deficiencies in the application. If the deficiencies are not remedied within the time limit fixed in that communication, the Office will reject the application.

text: 5.3 Registration procedure and publication (rights in rem)

text: Articles

text: and

text: and

text: Article 111(3)

text: (h) and

text: Article 111(6)

text: EUTMR

text: Article 33(2)

text: and

text: Article 40

text: and

text: Article 104(3)

text: (k) and Article (6) EUDR The Office will enter the right in rem in the EUTM or EUD Register and publish it in the EUTM Bulletin or EUD Bulletin. The Office will notify the applicant for registration of a right in rem of the registration thereof. When an application for registration of a right in rem was filed by the pledgee, the Office will also inform the EUTM proprietor or EUD holder of the registration.

text: 5.4 Transfer of a Right in rem

text: 5.4.1 Provision for the transfer of a right in rem

text: A right in rem may be transferred.

text: 5.4.2 Applicable rules

text: The procedure for the registration of a transfer of a right in rem follows the same rules as for the registration of a right in rem. The transfer of a right in rem is subject to the payment of a fee. Paragraph 2.3 above applies mutatis mutandis.

text: To the extent that a declaration by or signature of the EUTM or EUD proprietor is required in accordance with the rules, it must be replaced by a declaration by or signature of the registered pledgee (the former pledgee).

text: 6 Levies of Execution - Special Provisions

text: 6.1 Requirements concerning proof

text: 6.1.1 Application filed by the EUTM or EUD proprietor

text: When an application for the registration of a levy of execution is made by the EUTM or EUD proprietor, it must be signed by the proprietor. In the case of co-ownership, all co-owners must sign or appoint a common representative. The Office will inform the beneficiary when the levy of execution is registered in the EUTM or EUD Register. The beneficiary may file a statement with the Office to oppose the registration of the levy of execution. The Office will not take any further action on such a statement. Following the registration of the levy of execution, any beneficiary that disagrees with the registration of the levy of execution may request the cancellation or modification of the registration of the levy of execution (see paragraph 3 above). Any dispute regarding the levy of execution is a matter that must be resolved between the parties concerned under the applicable national law (

text: Article 19

text: EUTMR and

text: Article 30

text: EUDR).

text: 6.1.2 Application filed by the beneficiary

text: An application for registration of a levy of execution may also be filed by the beneficiary. In this case, it must be signed by the beneficiary. In addition, proof of the levy of execution must be submitted.

text: 6.1.3 Proof of the levy of execution

text: There is sufficient proof of the levy of execution if the application for registration of a levy of execution is accompanied by a final decision of the competent national authority

text: In many instances, the parties to the levy of execution proceedings will not wish to disclose all the details of the judgment, which may contain confidential information. In these cases it suffices if only a part or an extract of the levy of execution judgment is submitted, as long as it identifies the parties to the levy of execution proceedings and the EUTM or EUD that is subject to the levy of execution, and confirms that the judgment is final. All other elements may be omitted or blacked out.

text: 6.2 Registration procedure and publication (levy of execution)

text: When the right is registered, the levy of execution will be entered in the EUTM or EUD Register and published in the EUTM Bulletin or EUD Bulletin. The Office will notify the applicant for registration of a levy of execution of the registration thereof. Where applicable, the EUTM proprietor or EUD holder will also be informed.

text: 7 Insolvency Proceedings - Special Provisions

text: 7.1 Requirements concerning proof

text: There is sufficient proof of the appointment of a liquidator and of the insolvency proceedings if an application for registration of the insolvency proceedings is accompanied by a decision of the competent national authority. It suffices if the insolvency judgment is submitted. In many instances, the parties to the insolvency proceedings will not wish to disclose all the details of the judgment, which may contain confidential information. In these cases it suffices if only a part or an extract of the judgment is submitted, as long as it identifies the parties to the proceedings. All other elements may be omitted or blacked out. It is not necessary to submit the original of a document. Original documents become part of the file and, therefore, cannot be returned to the person who submitted them. Simple photocopies are sufficient. The original document or photocopy does not need to be authenticated or legalised unless the Office has reasonable doubts as to its veracity.

text: 7.2 Registration procedure and publication (insolvency proceedings)

text: When the EUTM or EUD is registered, the insolvency proceedings will be entered in the Register and published in the Bulletin. The publication contains the EUTM registration number(s), the name of the authority requesting the entry in the Register, the date and number of the entry and the publication date of the entry in the Bulletin. The Office will notify the applicant for registration of insolvency proceedings of the registration thereof. The liquidator’s contact details are recorded as the EUTM or EUD proprietor’s contact details in the Office’s database.

text: 8 Specific procedures for registered European Union designs

text: 8.1 Multiple applications for EUDs

text: An application for an EUD may take the form of a multiple application combining several designs (

text: Article 44

text: EUDR). An application for the registration of licences, rights in rem and levies of execution for an EUD may concern an individual design contained in a multiple application. For the purposes of the legal effect of licences, rights in rem and levies of execution, as well as of the procedure for registering licences, rights in rem and levies of execution, the individual designs contained in a multiple application will be dealt with as if they were separate applications. This continues to apply after registration of the designs contained in the multiple application. In other words, each design contained in a multiple application may be licensed, pledged or levied independently of the others. For licences specifically, the optional indications as to the kind of licence and the procedure for their examination referred to in paragraphs 4.2, 4.4 and 4.5, apply to each of the individual designs contained in a multiple application separately and independently.

text: The fee of EUR 200 for the registration of a licence, a right in rem or a levy of execution, or for the transfer of a licence or right in rem applies per design and not per multiple application. However, the ceiling of EUR 1 000 applies where multiple requests are submitted in the same application for registration of a licence or another right (see also paragraph 2.3). Example 1 In a multiple application for 10 designs, 6 of them are licensed to the same licensee. The fee for registering these licences is EUR 1 000, provided that: all six licences are included in a single registration request; or

text: all the relevant requests are submitted on the same day.

text: The request may indicate that, for three of these six designs, the licence is exclusive. This will not impact the fees to be paid. Example 2 In a multiple application for 10 designs, 5 of them are licensed to the same licensee. A licence is also granted for another design not contained in that multiple application. The fee is EUR 1 000, provided that: all six licences are included in a single registration request, or all the relevant

text: requests are submitted on the same day; and the holder of the EUD and the licensee are the same in all six cases.

text: 8.2 Entitlement proceedings for EUDs

text: EUD applications and registrations may be the subject of entitlement proceedings. Regarding the differences between the registration of a change of ownership following a transfer and entitlement proceedings, see the Guidelines, Part E Register operations, Section 3, Chapter 1 Transfers, paragraph 3. If an EUD has been applied for or registered in the name of a person who is not entitled to it under

text: Article 14

text: EUDR, the person entitled to it under that provision, namely the designer or their successor, may claim recognition as the EUD’s legitimate holder. A distinction must be made between proceedings before national courts or authorities and proceedings before the Office. Entitlement claims must be brought before the competent national court (e.g. specialised courts authorised to handle matters of entitlement in cases of employment or family matters) or the competent national authority (e.g. administrative offices or specialised bodies) in the relevant Member State. See the Guidelines on the examination of design invalidity applications, paragraph 5.3 Lack of entitlement.

text: Where a person is jointly entitled to the EUD, that person may, in accordance with

text: Article 15(2)

text: EUDR, claim recognition as joint holder. Regarding the applicable law for these proceedings, see paragraph 1.5. The Office is only competent to register the following entries in the EUD Register: the mention that legal entitlement proceedings have been initiated before the

text: competent court or authority of the Member State concerned; the date and particulars of the final decision of the competent court or authority or

text: any other termination of the entitlement proceedings; any change in the EUD’s ownership resulting from the final decision of the

text: competent court or authority. The application for registration must comply with the conditions laid down in paragraph 8.2.1. The effects of the different entries in the Register are described in paragraph 8.2.3.

text: 8.2.1 Requirements for an application for registration of entries relating to entitlement proceedings

text: Application form and language of proceedings An application for registration of entitlement proceedings can be submitted through the ‘communications back-upʼ option in the User Area. Regarding the language of proceedings, see paragraph 2.2, above. Fees There is no fee for registering any of the entries relating to entitlement proceedings. Parties to the proceedings A request for the registration of an entry in the Register under

text: Article 15(5)

text: EUDR (the initiation or result of entitlement proceedings) may be filed by: the EUD holder(s);

text: the person(s) claiming to be the legitimate holder in the entitlement proceedings; or

text: the competent national court or authority.

text: Where the Office receives documents relating to such proceedings from anyone other than the registered EUD holder, it will forward the documents to the holder. Additionally, if the request does not originate from the person recognised as the legitimate holder but this person is fully identified by their contact details, the Office will also forward the documents to that person. Mandatory indications The request for the mention in the Register that entitlement proceedings have been initiated, or terminated, must contain the following information: the registration number of the EUD concerned. If the application relates to several

text: EUDs, each of the registration numbers must be indicated;

text: the holder’s name, address and nationality, as well as the State in which it is

text: domiciled or has its seat or an establishment. However, if the Office has already assigned an ID number to the holder, it is sufficient to indicate this number together with the name. The application for a change of ownership must additionally contain the following information: the name, address and nationality of the person recognised as the legitimate holder

text: of the EUD as well as the State in which it is domiciled or has its seat or an establishment. However, if the Office has already assigned an ID number to the legitimate holder, it is sufficient to indicate this number together with the name. Regarding signature and representation, see paragraphs 2.4.3 and 2.4.4.

text: 8.2.2 Requirements concerning proof

text: For entry of the initiation of entitlement proceedings in the Register, the application must be accompanied by evidence that shows the court or authority of the Member State before which entitlement proceedings have been initiated. For the entry of the final decision or other termination of entitlement proceedings in the Register, the application must be accompanied by evidence that the entitlement proceedings have concluded, such as a final decision of the competent authority or court of the Member State.

text: 8.2.3 Effects of the entries in the Register

text: Initiation of entitlement proceedings – effects on subsequent requests

text: The entry of the initiation of entitlement proceedings in the Register freezes the EUD, meaning that any subsequent request for a transfer, licences, levies, insolvencies or rights in rem filed will be suspended. In the event of a request for surrender, the Office shall not enter the surrender into the EUD Register without the agreement of the claimant. The proceedings are resumed upon the following entries in the Register: an entry indicating the change of ownership as a result of the entitlement

text: proceedings; or an entry of the final decision of the competent court or authority rejecting the claim

text: of entitlement or terminating the proceedings in a way that does not change the entitlement over the EUD.

text: Change of ownership – effect on licences

text: Where there is a complete change of ownership of an EUD as a result of entitlement proceedings under

text: Article 15(1)

text: EUDR, licences and other rights lapse upon the entering in the Register of the new EUD holder. Upon registration of the new holder, the Office will inform: the new holder that they may request the cancellation of an already registered

text: licence; the registered licensee about:

text: ○ the date of registration of the new owner; ○ that the registered licence may be cancelled upon request since it lapsed according to

text: Article 16(1)

text: EUDR; and ○ that the licensee may ask the new holder to grant a new non-exclusive licence within 3 months of the registration of the new holder according to

text: Article 16(2)

text: EUDR. Upon request of the holder or the licensee, the Office will: cancel the registered licence; or

text: enter a modification of the already registered licence if the licensee requested a new

text: licence from the new holder under

text: Article 16(2)

text: EUDR. If the licensee requests a modification of the licence, it must provide proof that the new holder granted a new licence. The Office will not interfere in arranging the period and terms of the licence between the previous holder/licensee and the new holder. Any dispute regarding the licence is a matter that must be resolved among the parties concerned under the relevant national law (

text: Article 30

text: EUDR).

text: Change of ownership – effect on ongoing proceedings

text: As long as the change of ownership has not been entered in the Register, the allegedly entitled person may not invoke the rights arising from the registration of the EUD (see

text: Article 17

text: EUDR). Where there are time limits to be observed vis-à-vis dealings with the Office, the new holder may make the corresponding statements to the Office once the application for registration of the change of ownership has been received by the Office.

text: 9 Procedures for international trade marks

text: Rules 20 and 20bis Regulations under the Madrid Protocol.

text: 9.1 Recording of licences

text: The Madrid System allows for the recording of licences against an international registration.

text: All requests for the recording of a licence should be submitted on form MM13 either: directly to the International Bureau by the recorded holder; or

text: office of a contracting party in respect of which the licence is granted; or through the office of the licensee.

text: The request cannot be submitted directly to the International Bureau by the licensee. The Office’s application form should not be used. Detailed information on the recording of licences can be found in paragraph 703 and the following ones of the Guide to the Madrid System. For further information on international trade marks, see the Guidelines, Part M, International Marks.

text: 9.2 Recording of rights in rem, levies of execution or insolvency proceedings

text: The Madrid System allows for the recording of rights in rem, levies of execution or insolvency proceedings against an international registration (see Rule 20 of Regulations under the Madrid Protocol). For the convenience of users, form MM19 is available for requesting the recording of a restriction of the holder’s right of disposal in the International Register. The use of this form is strongly recommended to avoid irregularities. Requests should be submitted either: directly to the International Bureau by the recorded holder; or

text: to the office of the contracting party of the registered holder; or

text: to the office of a contracting party to whom the right in rem, levy of execution or

text: insolvency is granted; or to the office of the contracting party of the pledgee, beneficiary or liquidator.

text: The request cannot be submitted directly to the International Bureau by the pledgee, beneficiary or liquidator. The Office’s application form should not be used. Detailed information on the registration of rights in rem, levies of execution or insolvency proceedings can be found in paragraphs 698 and the following ones of the Guide to the Madrid System. For further information on international trade marks, see the Guidelines, Part M, International Marks.

text: 10 Procedures for international designs

text: Concerning changes to international registrations for designs, the recording of licences, rights in rem, levies of execution or insolvency proceedings are not possible at the EUIPO. This is however possible for EUDs filed directly at the Office, where these requests can be processed and entered in the EUD Register. Consequently, the Office will not process any such requests for international designs.

text: For more information concerning international registrations for designs, please see the Guidelines, Examination of application for registered European Union designs, paragraph 12 International Registrations.