Brand and domain name ownership changes.

Is it possible to change the ownership of a registered trademark?

The answer is yes. In this post we are going to explain the process and the documentation you will need if you are thinking of making brand and domain name ownership changes.

From the first moment you register a trademark, you acquire a series of rights over it. One of them is the assignment of the ownership of the trademark to third parties, which can be temporary or permanent. This change of ownership, i.e. that the trademark changes ownership, can be made for various reasons: a purchase and sale, transfer of rights, merger of two companies, donation…

For example, the owner of a family business retires and decides to leave the business in the hands of his heirs, handing over the trademark and the business to them.

Steps to follow for the change of ownership of a trademark

The entire process of trademark ownership change must be reported to the relevant offices, in order to maintain the legality of the assignment at all times.

• The first step is to draw up an agreement between the parties concerned, i.e. whoever assigns the ownership of the trademark (assignor) and whoever receives the title (assignee). This agreement, as mentioned above, must be legal and in writing.
• Enforce these rights and the agreement before the Spanish Patent and Trademark Office, so that it ratifies the agreement and the change of ownership. To do so, it will also be necessary to submit the following documents:

– Copy of the agreement formalising the transfer of ownership.

– Transfer document completed by the interested parties.

– Transfer certificate.

These documents can be found on the website of the Spanish Patent and Trademark Office (SPTO).

• When the SPTO receives this application, it will assess it to determine the legality of the agreement. If it is positive, the transfer of ownership will be complete. If it is negative, the transfer will be paralysed until it is rectified.

What if I want to change the ownership of my web domain?

If a company changes ownership, it may also wish to transfer ownership of its web domain to reflect this change, ensuring that the brand and domain match in terms of legality.

If a company changes the ownership of its domain, the process to be carried out will depend on the new owner. This can be done in a simple way, by changing the owner details at your current web provider or by transferring the domain to the new owner’s provider.

The process of transferring a domain depends only on the extension used, i.e. .COM or .ES:

• In the case of .COM domains, the change of owner can be done directly from the domain provider’s management panel. Once the data has been modified, a message will be sent to both the new and the previous owner to accept the process.
• When it is an .ES domain, the process is different, as it is carried out from Red.es, the registering entity that manages this type of domains. To do so, we will have to enter the Red.es website and start a “domain transfer” application, and send the necessary documentation to request this change.

The importance of registering your web domain

When it comes to assigning a domain name, the Internet is governed by the principle of “first come, first served”, i.e. you can register a free domain name. However, there are some exceptions, and trademark holders have a legitimate right to prevent third parties from using their trademarks on the web.

This right is exercised a posteriori. There is currently no system in place to prevent anyone from registering an already used, or modified, domain name (e.g. cococola.work). However, once registered, the owner of the trademark (Coca Cola) can recover or block that domain name through arbitration procedures, to which all persons registering a domain name are obliged to submit.

We must remember the importance of registering your domain so that you are the only one authorised to use it. At the same time, you manage to protect your brand on the Internet, avoiding fraudulent situations that could endanger your business and your commercial image.

At Lidermark, as an official patent and trademark registration company, we advise you on all your needs regarding the registration of trademarks in Spain, acting as intermediaries between the applicants and the Patent and Trademark Office, so that the procedures are simpler.