After registration · Trademark recordals
Keep your trademark record up to date after a change of name, address or owner
Trademark recordals are the requests that register changes affecting a mark or a pending application: the owner's name or address, an assignment, a licence or a limitation of the list of goods and services. We file them at OSIM, EUIPO or WIPO, for one mark or several at once. An up-to-date register matters at renewal, when you sell the business and in any dispute.
We record changes of name or address, assignments, licences and limitations of the goods list at OSIM, EUIPO and WIPO.
Your first consultation is free.
Who it’s for
This is for you if…
- Your company has changed its name or registered office
- You've sold or bought a trademark, or the company has been through a merger
- You're letting a partner, distributor or franchisee use the mark
- You want to narrow the list of goods and services, for example to settle an opposition
What’s included
What we do for you
- Reviewing the documents behind the change
- Drafting the assignment or licence agreement, if you don't have one
- Preparing and filing the recordal request
- One request for several marks when the same detail changes
- Following the file until the change is entered in the register
- Confirming the change and updating your renewal calendar
How it works
The steps, one by one
Step 1: Tell us what changed
Name, address, owner, licence or goods list, and which marks are affected.
Step 2: We gather the documents
For example the company-registry extract showing the new details, the assignment or licence agreement and the power of attorney.
Step 3: We file the request
One request is enough for several marks with the same change. The official fee, though, is paid for each mark or application changed.
Step 4: Entry in the register
The office records the change and you receive confirmation.
Trademark recordals
The four types of recordal
1. Owner's name or address. A company changes its name or registered office, or an individual moves. The request can also cover the representative's details, where relevant.
2. Assignment. The mark passes to a new owner, through a sale, a merger or the transfer of a business. Entering it in the register makes the transfer effective against third parties.
3. Licence. The owner keeps the mark but lets someone else use it, exclusively or not. Recording the licence strengthens the licensee's position towards third parties.
4. Limiting the list of goods and services. You give up some goods or services, to settle an opposition or to pay less at renewal. The list can only be narrowed, never extended.
Trademark recordals
What can't be changed
The sign itself, meaning the registered name or logo, can't be changed after filing, apart from minor adjustments that don't affect its distinctive character. If you've redesigned your logo, you need a new application. File it before the new identity goes live, so you aren't left unprotected on the very version you use.
Documents
What we need from you
- A company-registry certificate or other official document showing the new name or address
- The assignment agreement signed by both parties (to transfer the mark)
- The licence agreement or an extract from it (to record a licence)
- The goods and services that remain (for a limitation)
- A power of attorney for Brand New IP
Frequently asked questions
Questions about trademark recordals
What do I do with my trademark if the company changes name or address?
You record the change at the office where the mark is registered: OSIM, EUIPO or WIPO. You need the company-registry document showing the new details and a recordal request. If you hold several marks, one request can cover them all, though the official fee is paid for each mark. It's best done before renewal.
How do I transfer a trademark to another company?
Through an assignment: an agreement between the current and the new owner, followed by recording the transfer in the office's register. The agreement can cover all the goods and services or only some. Only once it's recorded is the transfer effective against third parties, so the new owner can enforce the mark without obstacles. We can draft the agreement and file the recordal.
Does a trademark licence have to be recorded at OSIM?
A licence is valid between the parties without being recorded, but recording makes it effective against third parties and helps the licensee if they need to act against an infringement. For franchise agreements or exclusive distribution deals we recommend recording it. We can also review the agreement first, so it covers the right classes and territory.
Can I change the logo of a registered trademark?
No. A registered sign can't be substantially changed after filing. A new logo needs a new application. The old mark can stay in force while you still use it, but if it goes unused for 5 years it can be challenged for non-use. It's worth discussing what to keep and what to replace before a rebrand.
Why would I limit my trademark's list of goods and services?
Usually for one of two reasons. An opposition or refusal targets only some of the goods, and giving those up saves the rest of the application. Or, at renewal, you pay per class, and unused classes cost money without protecting you. A limitation is permanent, so we talk it through before filing.
Related services
- Trademark renewalWe renew OSIM, EUIPO and WIPO trademarks for another 10 years, for all goods and services or just some of them.
- IP contractsWe draft and review licences, assignments, coexistence agreements and copyright transfers, then record them with OSIM or EUIPO when needed.
- Trademark watchA watch subscription covering OSIM, EUIPO and WIPO. We alert you, assess the risk and file oppositions on time.
Let’s talk about your trademark.
The first consultation is free. We’ll tell you honestly what can be protected, how and what it costs, before you pay anything.