Did you know that a trademark can be sold? Let’s see in detail the assignment of a trademark.
Article 23, 1) of the Italian Industrial Property Code, relating to the assignment of a trademark, provides that:
“A trademark may be assigned in respect of all or part of the products or services for which it is registered”.
Contrary to the past, a trademark may be assigned without any obligation to assign the company or a branch of the company.
Assignment of the trademark and the safeguard of consumer
It should be noted, however, the provisions of Article 14, 2 a) of the Italian Industrial Property Code, according to which:
“a trademark is revoked if, due to the context within which it is used by its holder or with his consent in respect of products or services for which it is registered, it has become such as to deceive the public, particularly as to the nature, quality or geographical origin of the products or services “.
Thus, there is a limit that is the truth of the brand and the safeguarding of the public, which should not be in any way misled as a result of the assignment of ownership.
In practice, you can take some precautions to prevent the deception, including, for example:
- to inform the public of the change of ownership to do your best in order
- to maintain the quality of the product.
The Court of Milan (judgment of 10 September 2003) has stated in favor of the argument that the change of the ownership requires the assignee to maintain the same level of quality of the product that was identified by the assigned trade mark.
As for the object of the assignment, while it is obvious the possibility of a partial assignment of the brand, there are some doubts about the possibility of assigning separately (namely to different owners) similar goods.
Also in this case the problem is the preservation of the public and the need to ensure that consumer, when confronted with similar products, may mistakenly believe that they came from the same manufacturer.
The assignment of a trademark must be recorded to the Italian Patent and Trademark Office, in case of Italian trademark.
Assignment of EU trademark
Article 1, 2) of the European Union trademark Regulation states that:
“A EU trademark shall have a unitary character. It shall have equal effect throughout the Union: it shall not be registered, transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, not shall its use be prohibited, save in respect of the whole Union”.
The unitary character means that the proprietor of the EU trademark may assign the same in full (namely for the entire territory of the European Union) and not only for some States.
Another important article in the field of the assignment of a EU trademark is Article 20 of the European Union Trademark Regulation:
“A EU trademark may be transferred, separately from any transfer or undertaking, in respect of some or all the goods or services for which it is registered.”
This means that if you use your EU trademark both for clothing and for watches but you do not care anymore about watches, you can sell you brand for watches and you can keep the property for clothing. Also for this type of trademark, then, we admit the legitimacy of the assignment without any obligation or transfer of a branch of company, as well as we admit the legitimacy of the partial assignment (namely, assignment of some goods/services and not the totality of the products or services distinguished by the mark).
Article 20, 4) and 11 states that:
“On request of one of the parties a transfer shall be entered in the Register and published. As long the transfer has not been entered in the Register, the successor in title may not invoke the rights arising from the registration of the EU trademark”.
Therefore, it is necessary to proceed with the recordal of the assignment to the EUIPO.