Glossary
French: contrat de cession de marque
A trademark assignment agreement (contrat de cession de marque) transfers ownership of a trademark. It is a contract signed by the assignor (cédant) and the assignee (cessionnaire).
The assignment may cover one or several marks, and it may be partial: a mark can be assigned for only part of the goods and services it covers, with the assignor keeping the rest. The contract can also include the transfer of the priority right attached to a mark — relevant when the assignee intends to extend protection abroad within the six-month Paris Convention window.
To be enforceable against third parties (opposable aux tiers), the assignment must be recorded with the INPI or the EUIPO. This is the French/EU analog of recording an assignment with the USPTO, and it carries the same practical consequences: an unrecorded assignee may be unable to assert the mark against third parties or appear as owner in proceedings.
US law treats a trademark as inseparable from its goodwill — an “assignment in gross” without the associated goodwill is invalid. French and EU practice does not police assignments through a goodwill requirement in the same way, so assignment mechanics are generally simpler; the critical formality is the recordal described above.
A trademark assignment must be evidenced in writing, on pain of nullity — French practice treats a mark as too significant an asset to change hands informally. Beyond that basic requirement, the parties are largely free to structure the deal: a stand-alone assignment agreement, one clause within a broader business or asset sale, or part of a corporate restructuring. What the assignment does need, if it is to be recorded, is enough precision to let the INPI or the EUIPO identify the mark, the parties, and the scope of what is transferred — full portfolio, or only certain goods and services.
An assignment should not be confused with a trademark license, even though both are frequently discussed in the same conversation with a US client expanding into France. An assignment permanently transfers ownership; a license merely authorizes a third party to use the mark, under conditions set by the owner, who remains the trademark owner of record throughout. Licenses, too, should be recorded with the INPI or the EUIPO to be fully effective against third parties — but the two instruments produce very different legal relationships and should never be drafted or filed interchangeably.
Beyond the absence of a “goodwill” requirement, US and French/EU assignment practice converge on most of the mechanics: both require a written instrument, both recognize partial assignments, and both make recordal with the trademark office the key step for giving the transaction effect against later purchasers, licensees or creditors relying on the register. The main trap for US counsel is treating recordal as optional paperwork to clean up later; until it happens, the assignee’s ownership is real between the parties but fragile against everyone else, including in a proceeding where standing is contested.
A US parent company transfers its French trademark to a newly created French subsidiary as part of an internal reorganization. The assignment agreement is signed and the transfer is economically effective immediately, but recordal with the INPI is deprioritized during a busy integration. Six months later, the subsidiary discovers a domestic infringer and needs to sue — but because the assignment was never recorded, the subsidiary may struggle to establish its standing as trademark owner before the court, and the infringer’s counsel will have every incentive to raise exactly that objection.
Assignment recordal comes up whenever a mark changes hands as part of a US client’s corporate transaction touching French or EU rights — see trademark assignment recordal for the filing mechanics themselves. It is also relevant background when assessing trademark availability, since an unrecorded prior assignment can create confusion about who actually holds a blocking right. See also trademark owner, applicant, INPI and EUIPO.