Regulation of trademark and patent transfer and licensing: key points for protecting your intangible assets

Trademarks: assignment or licence — what should the company know?

A registered trademark is an exclusive right that a company can assign (transfer ownership) or license (allow third-party use).

Assignment of trademarks

An assignment involves a change of ownership. It may be total or partial (covering certain goods or services), but never territorial: the trademark owner must be unique throughout the national territory.

In assignment contracts, the assignor must guarantee the delivery and legal soundness of the trademark. It is common to include non-compete clauses to prevent conflicts with the former owner. The assignee must pay the agreed price, which may include deferred payment or retention of title.

Trademark licences

If a company wants to keep ownership but allow others to use the trademark, it can grant a licence. The owner (licensor) authorises another person or company (licensee) to use the trademark under agreed terms.

Unless agreed otherwise, the licence covers the entire territory and all registered products or services. By default, the licensee cannot sub-license or assign the licence without the licensor’s consent.

Types of trademark licences:

• Simple or complex: only the trademark or combined with other intangibles.

• Exclusive or non-exclusive: restricting use to a single licensee or not.

• Total or partial: covering all or some goods/services.

• Territorial or universal: limited to certain areas or worldwide.

• Paid or free: fixed fee, variable fee (royalties) or a combination.

• Reciprocal: multiple companies use a trademark jointly for a shared project.

Registering the licence with the Spanish Patent and Trademark Office (OEPM) is advisable to strengthen legal certainty.

Patents: use rights, never disguised transfer

A patent grants the owner exclusive exploitation rights but does not prevent the owner from authorising third parties to use it through licences, without losing ownership.

Types of patent licences

• Contractual licence: a private agreement between the owner and licensee. It may be exclusive (no other licences allowed) or non-exclusive (other licences may be granted and the invention exploited directly).

• Licence as of right: the owner publicly offers the patent for use by any interested party. The OEPM will intervene if an economic agreement is not reached.

• Compulsory licence: in exceptional circumstances (public interest or lack of exploitation), the OEPM may grant a forced licence. It is always non-exclusive and does not allow sub-licences.

Key points for companies and workers

Companies:

• Draft clear contracts, detailing scope, affected products/services and limitations.

• Keep documentation of all conditions: delivery, price, non-compete clauses.

• Register relevant contracts to ensure enforceability against third parties.

Workers and creators:

• Know your rights to royalties or economic participation, especially if the development originated internally.

• Review collective agreements and employment contracts to guarantee fair compensation.

Properly regulating the transfer, assignment and licensing of trademarks and patents is an integral part of a company’s strategy to protect industrial property and maximise its value. Specialised legal advice is essential to avoid disputes, reinforce legal certainty and make the most of these assets.