Assignment agreement is a legal instrument often used by parties (assignor and assignee) for a voluntary transfer of trademark ownership. National legislation provides the mandatory requirements for trademark assignment agreements (“TA Agreements”).
Under Romanian legislation, there are several specific requirements applicable to TA Agreements, under the penalty of nullity or annulment of the assignment. Here is a brief presentation of these requirements.
Form Requirements for a Free of Charge TA Agreement
Requirements of Romanian Trademark Law
According to Romanian Trademark Law (RTL), any TA agreement must be in written form bearing the parties’ signatures, under the penalty of nullity of the assignment (this provision is similar to the first thesis of art 17 (3) of European Trademark Regulation).
Requirements of the Romanian Civil Code
The Romanian Civil Code (RCC) supplements the provisions of RTL. Under the RCC, the agreement whereby “a party having the intent to gratify, irrevocably disposes of an asset for the benefit of other party, represents a donation.” Donation rules are applicable to any agreement that regulates an irrevocable free-of-charge transfer of ownership in a specific asset. Subject to the penalty of nullity of donation, these rules provide, inter alia, that (i) the donation agreement must be concluded under authentic form (i.e., by a public notary) and (ii) the donated asset(s) must be itemized and evaluated even under a private deed.
Since a trademark is an asset, it is generally accepted that to assimilate a free-of-charge TA Agreement via donation, the TA Agreement should comply with the above-mentioned special rules (i.e., it should be concluded before a public notary and the trademark assigned has to be evaluated).
Donation rules are not applicable for free-of-charge TA Agreements that contain a revocation clause, however.
Assignment of Similar Trademarks Owned by a Holder, Which Are Used for Similar/Identical Goods and/or Services
RTL states that “all identical or similar trademarks owned by the same holder, which are used for identical or similar goods or services, should be assigned to the same person under the penalty of nullity of the assignment.”
This restriction is debatable since it may impose the acquisition of trademarks upon an assignee who has no interest in them. On the other hand, this restriction protects consumers against the confusion that can be created where similar/identical trademarks are used by different owners for similar/identical goods and services.
The assignment of similar or identical trademarks that have been used for identical or similar goods before the conclusion of the agreement is subject to this restriction. Per a contrario, an assignment agreement should be valid if it involves: (i) a trademark that is in use at the moment when the agreement was concluded, if this trademark is identical with/similar to the other trademark of the same owner, which has not used for identical/similar goods and services; or (ii) a trademark that has not been used before the conclusion of the agreement, if this trademark is identical with/similar to the other trademark of the same owner, which was used for identical/similar goods and services; or (iii) a trademark similar to/identical with the other trademarks of the same owner, if all these trademarks (including the trademark that is the subject of the assignment) covering the same goods and services have not been used.
Agreements on Assignment of Trademarks for a Price
Trademark assignment for a price is a particular sale of goods regulated by the RCC. In this respect, general rules on price requirements regarding sale of goods provided by RCC are also applicable to trademark assignments. One of these requirements provides that the price should be serious and determined, or at least determinable.
If the price is set without intention of payment, or is disproportionate to the value of the assigned trademark, the TA Agreement can be subject of annulment.
Given the above, one can conclude:
- One should avoid drafting free-of-charge TA Agreements under private deeds;
- One should not set negligible prices in TA Agreements (e.g., “the consideration for trademark’s transfer is one EURO”);
- For transactions where a trademark portfolio of one holder is to be transferred to multiple assignees, before negotiations one should check the validity of such transactions by identifying all identical/similar trademarks from the portfolio and checking whether the goods and services designated by respective trademarks have been used.