Recordals in the register – Keep records updated

Types of recordals in the register

The steps to perform a recordal of the change in the register are different depending on the type of change.

1. Assignment – You have acquired a trademark or a trademark portfolio from another company, or you have acquired an entire company (including its trademarks).
2. Merger – A company has been merged into another company.
3. Change of name – Your company name has changed.
4. Change of address – Your company address has changed.

In some cases, several changes have to be reflected in order to provide full historical evidence of changes in trademark ownership. Let's say you have acquired a trademark portfolio. The old owner (the assignor) has changed its address but did not record this change in the register. It will be necessary now to evidence the change of address of the former owner and to then request the recordal of the change in ownership. This may even have to be done in separate recordals, depending on the national law and practice.

Is it really necessary to record changes?

The short answer is yes, and as soon as possible. If incorrect information is recorded for your trademark this can cause a number of problems.

In general, a change in ownership, name or address should be reflected in the corresponding Trademark Register as soon as possible after the change has become effective. The most obvious problem is that notifications from Trademark Offices cannot be safely sent to the trademark owner. In the worst case, you will lose your trademark right as no reaction could be taken in response to a cancellation action. This is not a real issue in case a representative is recorded in the register. But even so, differences in the recorded data and the actual company data cause difficulties when a current power of attorney has to be presented.

The longer you wait before making the recordal in the register, the harder it might become to have the change recorded. The most serious issue is if the previous owner no longer exists and an assignment can no longer be documented in the form required by a Trademark Office (often the notarised signature of an authorised signatory of the previous trademark owner is required). Besides the expense of remedying the situation, any time needed to set the register data straight may be very burdensome, especially if you need to quickly rely on a trademark in litigation. 

Documentation required for recordals

Most Trademark Offices require formal documentation to be presented for the recordal. This means either an official certificate (e.g. an extract from a Commercial Register showing historical data) or a signed agreement between the affected parties.

You always have to bear in mind that the various Trademark Offices have different formal requirements. Often notarisation is required, sometimes legalisation too (by apostille or through an embassy). This leads to varying levels of administrative coordination and costs.

authors: Lisa Pozzobon, Christian Schumacher