The importance of recordal of any change affecting your IP rights !

Industrial property rights, patents, trademarks and designs, are assets whose ownership may change during their lifetime as a result of the day-to-day life of business and companies, whether it is an administrative change in the name, address, or legal status of the owner, or an act concerning the exploitation of the right, such as a license, assignment, agreement, pledge of the right concerned, or an act modifying the scope of the right, such as, for a trademark, a voluntary cancellation or a limitation of the wording.

Under French law, according to articles L.513-3, L.613-9 and L.714-7 of the Intellectual Property Code, “all acts affecting the ownership or use” of an industrial property title must be recorded with the Registers of Patents, Trademarks or Designs, not for their intrinsic validity, but in order to be enforceable against third parties as of the publication of their recordal. Since most of the Offices do not impose a time limit for these formalities, most of the time, the owners fail to record these changes or, for budgetary reasons, wish to postpone this formality. As time goes by, the changes can follow one another, making the situation more and more complex and more difficult to regularize the ownership of the titles, especially if the rights are protected in many countries, or if the companies no longer exist.

Even if accelerated recordal procedures are possible with both national and foreign offices, we recommend to carry them out without delay. 

Two case law decisions illustrate, for the first, the unfortunate but frequent consequences of not updating the ownership of the rights, and of regularizing them too late, for the second, the interest of this recordal in the National Patent and Trademark  Registry in order to initiate infringement actions and obtain damages.

In the Sony v. Subsonic case[1], the SONY companies, as plaintiffs in the infringement and unfair competition action, were declared inadmissible to act. Indeed, and in accordance with art. L.716-4-2 of the Intellectual Property Code, only the owners of the titles or their licensees (in the case of trademarks, with the consent of the owner and unless otherwise stipulated in the contract) may bring an infringement action and obtain sanctions and damages. However, the plaintiffs had not succeeded in the first instance in establishing the reality of a transfer of ownership in their favor of the three patents that were the basis of their action, a transfer that occurred nearly 8 years before the application for recordal. The Court of Appeal having then admitted the validity of the recordal in view of additional documents, it judged however this one too late, its publication having intervened after the summons of the company SUBSONIC. Indeed, according to established case law, acts of infringement prior to the publication of the recordal cannot be prosecuted.

In another case, Mousti’stores SARL v. AMB France SAS and C Stores SAS[2], the scope of the license agreement, and in particular the licensee’s right to act alone without needing prior written authorization from the trademark owner or the sending of a formal notice to the owner by the licensee to take legal action, which has remained without effect, was confirmed thanks to the analysis of the license agreement registered with the French Trademark Registry.

Therefore, be sure to inform your attorney of each modification affecting your company or your industrial property titles in order to proceed without delay to its recordal with the corresponding registers.

[1] Paris Court of Appeal, Sept. 9, 2022, SONY JP, SONY UK, SONY FR c/SUBSONIC arrêt C. (RG 20/12901)

[2] Paris Court of Appeals, Pole 5, 2nd Ch., Apr. 22, 2022, 21/19812 (M20220137)

Mousti’stores SARL v. AMB France SAS and C Stores SAS

Published by

Jérôme Braquehais

Head of the Recordal Department

Veillez donc à informer votre Conseil de chaque modification affectant votre société, ou vos titres de propriété industrielle pour procéder sans tarder à son inscription auprès des Registres correspondants.