Selling your trademark
A trademark, as an intangible asset, can be used in a variety of ways: licensing, contribution to a company, or even sale, the possibilities are the same as those of a tangible asset. All of these operations are subject to special regimes and must comply with a certain number of conditions: the transfer of a trademark is no exception.
The different types of assignment
The assignment of a trademark involves a transfer of ownership of the trademark together with all the rights associated therewith, in particular the right to use it and the right to take legal action to safeguard its rights. Before considering an assignment, it is important to verify that it has been properly deposited, even if the recording hasn't taken place yet.
Assignment for valuable consideration or free of charge
While they are often sold for a fee, trademarks can also be transferred free of charge. However, setting the amount at a symbolic one euro allows the parties to avoid the tax regime for donations.
Partial or total assignment
A partial divestiture concerns only certain products or services, not all of those listed in the wording. Other restrictions may also be provided for in the assignment contract, such as restrictions in time or related to modes of use.
Assignment of an exploited or unexploited trademark
The transfer of an unused trademark is considered to be a transfer of furniture and is therefore subject to VAT. On the other hand, the transfer of an exploited trademark will be treated as the sale of a business and will be subject to a different regime. Conversely, when transferring ownership of a business, it must be determined whether the transferor intended to include the trademark in the transfer: the trademark may in fact be transferred independently of the business it constitutes.
What is the cost of an assignment?
There are two types of fees for a trademark assignment: not to mention the price charged by the assignor in the case of an assignment for valuable consideration, the tax registration and the fees for registering the contract with the INPI are to be taken into account.
The amount of a registration at the INPI varies according to the procedure chosen. For a classic procedure, it will cost 27 € per brand and for 10 brands and more, a flat fee of 270 €. For an accelerated procedure, an additional fee of 52 € per trademark will be charged.
The tax regime for trademark assignments varies depending on whether the trademark is exploited or not: only assignments of exploited trademarks will have to be registered with the tax authorities. In this case, the registration fees are set in proportion to the value of the transfer:
- Less than 23 000 €: taxes levy a minimum fee of 25 € but registration fees are at 0%.
- Between €23,000 and €200,000: the registration fee is 3%.
- Beyond 200 000 €: registration fees are 5%.
These costs are usually borne by the assignee, which must be mentioned in the contract. In order to be supported in the process of brand transfer, it is recommended that you to call in a patent attorney.
The requirement for a written contract and registration with the M.N.R.
The trademark assignment contract is a private contract, which means that a notary is not required. However, formalism is required and a written contract is required, which must be registered in the National Trademark Register, under penalty of nullity. This requirement is found in Article L714-1 of the Intellectual Property Code.
The assignee, i.e. the purchaser, of a trademark that has not been registered in the National Trademark Register will not be considered as the new owner in the eyes of third parties. It is only from the time of publication in the R.N.M. that he is vested with his rights in the eyes of third parties, in particular the right to take action for infringement.