After the filing of an intellectual property right, several types of changes are likely to occur, such as the owner’s move, the change of his name in a legal way or the assignment of his rights. Such corrections must be recorded in the relevant register, as this could have very damaging consequences for the holder.

Appropriateness of registration by the rights holder

By definition, registration is an approach made with the National Register of Trademarks, Designs and Patents by means of a paper or electronically, allowing the owner to notify changes in his intellectual property rights. This is important because it enables third parties to be informed of the ownership of trademarks, patents, designs and models as well as of the operations carried out on them.

Registries are national

In France, the National Registry of Trademarks only accepts registrations of trademarks whose effects are effective in France. Registrations concerning international trademarks are also impossible except in cases where they cannot be effected at the International Office (OMPI). This is particularly the case for the license, which must be registered directly with the National Registry in accordance with its own legislation. This is because the legislation of certain states such as Germany, Australia or New Zealand does not provide for the registration of trademark licenses, thus rendering their registration in the international register ineffective.

Changes affecting ownership or enjoyment of the trademark

According to Article L. 714-7 of the Intellectual Property Code, “any transmission or modification of the rights attached to a trademark must be registered in the National Register of Trademarks in order to be effective against third parties”. This article shows that if the assignee fails to register its assignment or trademark license, the assignee may not oppose these acts against third parties. On the one hand, this will prevent him/her from taking opposition action against a subsequent filing or in the context of a legal action and on the other hand, he/she may be held liable in the event of a mistake committed by the beneficiary of a trademark license, as stated in a judgment handed down by the European Court of Justice on 4 February 2016.

On the other hand, other more rare deeds such as mortgages, pledges or guarantees also deserve to be registered with the Registry, otherwise these deeds will not be enforceable against third parties.

Thus, licenses and assignments are not the only amendments requiring registration by the rights holder. The latter may indeed be affected by other operations although they are not expressly covered by Article L. 714-7 of the Intellectual Property Code.

These transactions include the following:

–Total or partial withdrawal of trademark rights: where the trademark has not been registered, it is possible to withdraw or specify some goods and/or services, or to withdraw the entire trademark. You may find yourself in this situation if the proprietor of an earlier trademark believes, for example, that this new application infringes his rights and requires the withdrawal of certain goods or services or, more significantly, the withdrawal of the trademark.

–The total or partial renunciation of the trademark: even if it is less common, these are cases in which modifications are requested after the registration of your trademark.

From a practical point of view, the right holder must also register in the Trademark Register:

–The change of address explained by the fact that if the INPI is not informed and the owner of the rights is not represented by an agent, he may never receive a reminder letter to renew his trademarks.

–The change of legal form (a SAS becomes an SA for example) because if the INPI is not informed of this change, it will refuse the renewal of the trademarks with the new data without justification.

–The change of name as illustrated by the harsh decision of the European Court of Justice of September 8th, 2016 confirming that the holder must register his change of name in order to avoid being deprived of his rights.

Limits of registration by the owner of the trademark right

The corrections that the holder may enter are limited, and are limited to the possibility of limiting the protection of his rights. Therefore, it is impossible to modify your sign, name or logo, nor is it possible to extend the protection of your right by adding products and/or services through registration.

Registration: the solution against the loss of rights

Failure to register the above-mentioned changes can have very damaging consequences such as forfeiture of rights. Moreover, the positions adopted by the courts continue to be increasingly rigorous, prompting companies to systematically register events affecting all intellectual property rights or their holders in order to avoid all types of damage.

Registering changes affecting your intellectual property rights is an essential step in terms of protection. Dreyfus & Associés has experts in trademark law, as well as in national, European and international trademark registrations. Dreyfus & Associés is the ideal partner to support you in this process of securing and updating your intellectual property rights.