Selling your trademark

A trademark can be transferred to a third party at any time during its life. However, the sale is subject to conditions of formality (the contract), publicity (the registration) and registration (with the tax authorities).

How do I draw up a trademark assignment contract?

The transfer contract is a private deed, i.e. it does not need to be drawn up by a notary. The parties can conclude it on their own without any problems.

Here are the elements to be included in a good trademark transfer contract:

• The names of the partieswith their addressand, where applicable (in the case of companies) the RCS number and the representative's name who will sign at the bottom of the contract.

• The Preamble it allows to give the contractual framework and to explain the conditions under which the parties wished to conclude the sale. In the event of a dispute before a court, the preamble allows the judge tointerpret the will of the parties. So do not hesitate to explain why you are making this sale, for what purpose .
• The object of the contract it is a trademark assignment. List therefore the trademarks that are the subject of the assignment (name of the trademark, territory and registration number). If there are a lot of them, refer to a Annex which will list them all.
• The content of the assigned rights the assignor (the seller) assigns to the assignee (the buyer) full and complete ownership of the trade mark(s) in question, and therefore :
  • the right tooperate the brand(s) as it sees fit
  • the right toact in attack or in defence before all authorities to safeguard his rights.
• The sale price the price remains at your discretion. You can arrange for payment by instalments within the contract if you wish.
• Applicable law in general French law. Overall, even if you are in dispute with a foreigner, try to obtain the application of French law.
• The competent court in France, only the TGI is competent to rule on a trademark dispute. Try to get it to be the court of your domicile, it will be easier for you in case of a dispute.

• Coverage of costs The assignee (the buyer) generally bears the costs ofregistration before the INPI andtax registration if necessary.

• The number of original copies One for you, one for the other party, one for the INPI/taxes.

• Date, place

• Signature of each party

Do I have to have my trademark assignment contract notarized?

No, the trademark assignment contract is a private sub-contract, i.e. it is signed between the parties without the need for a notary.

Why and how to register the contract with the INPI?

You must register the contract with the INPI, as this will make the transfer official with third parties. If you do not do so, and a dispute arises over the trademark you have assigned (for example), you may be taken to court even though the trademark no longer belongs to you. This is because, as far as third parties are concerned, you will always be deemed to be the owner of the trademark. In other words, all you have to do is register online at the following address: http://inscription.inpi.fr/. A registration number will be given to you instantly. The information will then be entered into the INPI database in the trademark file.

The cost of registration is currently (26.08.2015) 27 €. In general, as indicated above, it is the assignee (the buyer) who takes care of this formality.

Tax registration

It is necessary to differentiate between the assignment of a trademark that is exploited or a trademark that is not:

• If the trademark is exploited :
  • When the assignment of the trademark is accompanied by the assignment of the customers attached to it or other elements of the assignor's business, then it is obligatory to register the contract with the tax authorities and pay registration fees at a different rate depending on the value of the assignment :
    • 0 % when the transfer value does not exceed 23,000 euros (taxes still levy a minimum duty of 25€)
    • 3 % when it is between 23,000 and 200,000 euros
    • 5 % if it exceeds 200,000 euros
  • When the assignment of the trademark is not accompanied by the assignment of the customers attached to it or other elements of the assignor's business, it is not mandatory to register the assignment deed with the tax authorities. If you still wish to do so voluntarily, then the cost will be 125€.

• If the trademark is not exploitedIn the case of a transfer of shares, it is not mandatory to register the transfer deed with the tax authorities. If you still wish to do so voluntarily, then the cost will be 125€.

Finally, the above rules apply for legal persons. The private persons have no obligation to register the deed of assignment with the tax authorities, regardless of the value of the assignment. If a private individual still wishes to do so voluntarily, then the cost will be 125€.