Transferring a trademark (ie, a sign) free of charge is a perilous exercise. Without any financial consideration or a material thing – as would be the case, for example, with the transfer of an object or a building – such an operation risks being penalised by the tax authorities and, moreover, giving rise to disputes by the assignee(s). It is therefore advisable to prepare in advance for any possible consequences through a contract.
The question of transferring IP rights (eg, trademarks, patents or designs) is always sensitive. Generally speaking, when these rights are exploited, they generate income and therefore have a value. Consequently, their transfer must give rise to a valuation. The tax authorities are very careful to ensure that this value is assessed rigorously.
Transferring a trademark requires the payment of registration fees and possibly value-added tax (VAT), depending on:
- whether the transfer is isolated or part of an overall business transfer; and
- the prior exploitation of the trademark.
If the transfer of the trademark is part of an overall transfer of a business, it is subject to registration duty at the rate set out in article 719 of the General Tax Code (CGI) (ie, 0%, 3% or 5%) and is exempt from VAT under article 257 bis of the same code.
If the trademark is transferred alone, the applicable tax treatment will depend on the prior exploitation of the trademark by the transferor. In particular, when a trademark is exploited, a clientele is attached to it, and the transfer of the trademark entails the transfer of this clientele. However, transfers of customers are subject to the regime of article 719 of the CGI. Although no exemption is provided for in terms of VAT, the administration tolerates exempting transfers subject to proportional registration duties. If a previously unused trademark is transferred in isolation, the transfer is only subject to a fixed registration fee of €125 (article 680 of the CGI) and VAT is due on the transaction.
Transfers of trademarks free of charge are therefore rare and not recommended as they carry a tax risk in themselves.
On 8 February 2022, the Paris Court of First Instance decided on a dispute between partners who had initially registered a trademark and designs in both their names. A document transferring the intangible assets free of charge had been drafted and signed. The plaintiff claimed that his signature had been forged and that he had never consented to the transfer. The absence of any financial considerations made it impossible to formally record the transfer. The other partner had made use of the trademark (in particular, by licensing it) and had collected royalties.
The plaintiff claimed that the trademark transfer should be nullified on the grounds that, as it had been made free of charge, it was a donation, and therefore had to comply with both the provisions of the Civil Code relating to donations and those of the Intellectual Property Code (IPC).
Indeed, article L 714-1 of the IPC provides that "[t]ransfer of ownership or pledging shall be recorded in writing, under pain of invalidity".(1) Article 931 of the Civil Code, meanwhile, specifies that "[a]ll acts containing a donation inter vivos shall be executed before notaries, in the ordinary form of contracts; and the notaries shall retain an original of them, on pain of nullity".(2)
However, in this case, the contract – as well as the fact that its date was wrong (since it included an appendix dated after the date of signature of the contract) – had clearly been signed privately and not before a notary. It therefore did not satisfy the provisions of article 931 of the Civil Code. The judges also pointed out that, since the trademark and designs were intangible assets, they could not be physically delivered.
The Court recalled, for the sake of argument, that case law has accepted a derogation from the rule of article 931 of the Civil Code with regard to manual gifts (ie, the physical delivery of the thing given). This obviously excludes marks that are not physical in nature.
As a result, the judges declared the deed of transfer of the trademark null and void as it had been concluded under private signature and should have been executed before a notary.
The solution in this case seems appropriate in light of the security of legal acts in IP matters. The use of gratuitous deeds – even between a director and their company or between companies belonging to the same group – must be carefully analysed in order to take into account the tax risks incurred, as well as the formal aspects specific to donations, as noted by the judges in this case.
The judgment addressed another interesting topic: the system of trademark co-ownership. The judges recalled that article 815-3 of the Civil Code(3) provides as follows:
The co-owner or co-owners in indivision holding at least two-thirds of the undivided rights may, by this two-thirds majority:
1° Carry out acts of administration relating to the undivided assets;
2° Give a general mandate of administration to one or more of the co-owners in indivision or to a third party;
3° Sell the undivided movables in order to pay the debts and charges of the indivision;
4° Conclude or renew leases other than those concerning immovables with respect to uses that are agricultural, commercial, industrial, or craft-based.
They are bound to inform the other co-owners of such acts. If they do not, decisions made may not be opposed to the other co-owners.
Nevertheless, consent of all of the co-owners in indivision is required to carry out every act that does not arise out of the normal handling of the undivided assets and to carry out all acts of alienation other than those addressed in 3° above.
If a co-owner in indivision takes in hand the management of the undivided assets, and the others know of this and nevertheless do not oppose it, he is deemed to have received a tacit mandate, covering acts of administration but neither acts of alienation nor the conclusion or the renewal of leases.
The judges logically deduced that the use of a trademark or design can only be considered to have been consented to by the undivided co-owners representing at least two-thirds of the rights in the title. In this case, as there were two undivided co-owners, unanimity was required and the acts of use decided on by only one of the undivided co-owners were illegitimate as they had been carried out without the consent of the other trademark owner and therefore constituted an infringement of the trademark. This gave rise to personal liability on the part of the author of the acts.
It is therefore advisable, when registering a trademark or designs in joint ownership, to draw up a joint ownership contract setting out and regulating the conditions under which each of the parties may decide on the use of the intangible asset.
For further information on this topic please contact Eric Schahl at INLEX IP Expertise by telephone (+33 1 56 59 70 90) or email ([email protected]). The INLEX IP Expertise website can be accessed at inlex.com.
(1) This translation can be found here.
(2) This translation can be found here.
(3) This translation can be found here.