When a portfolio must be split in a demerger: what to do first
When a demerger splits a company, the trade mark and design portfolio must be reassigned entity by entity before any recordal is filed. The first task is a matching exercise: list every right against the demerger deed and confirm, mark by mark, which entity now owns it. Filing follows only once that list is settled.
Basis
For European Union trade marks, a change of proprietor caused by a demerger is treated as a transfer under Regulation (EU) 2017/1001 (EUTMR). The office recognises the new proprietor only once a recordal request, supported by the demerger documentation, has been entered against the register. National trade marks and registered designs follow the parallel recordal route of the relevant national office. The mechanism is comparable, though the register, the form and the supporting evidence differ from one office to another.
Practical consequence
Until the transfer is recorded, the party named as proprietor in the public register is not the party that actually controls the right under the demerger deed. Licensees, distributors and enforcement counterparties rely on what the register says, not on an internal corporate document they have never seen. A licence attached to a split mark is not reassigned automatically by the deed alone; the licensee's consent or a formal notice may still be required, and a licence left unattended at this stage can resurface later as a pricing dispute, in the way described in When the renewal price doubles: what to do first.
What to do
- List every registered mark, registered design and pending application in the portfolio, entity by entity, against the demerger deed.
- Confirm, right by right, which entity receives the mark and which one keeps it, before touching any office form.
- File the recordal request with the relevant office, attaching the demerger extract or an equivalent corporate document as evidence.
- Notify known licensees and counterparties of the change of proprietor once the recordal is filed, not before, to avoid a mismatch with the register.
- Check pending customs applications lodged under Regulation (EU) No 608/2013 in the old proprietor's name; an enforcement request stops working once the register no longer matches the applicant.
- Update watch services and renewal reminders to the new proprietor's details for every jurisdiction covered.
Who decides
| Question | Decision-maker | Basis for the decision |
|---|---|---|
| Whether the recordal request is accepted | The trade mark office — EUIPO for EU marks, the national office for national rights | The demerger deed and a supporting extract from the commercial register |
| Whether an ownership dispute between the resulting entities is resolved | The office's legal division, and on appeal the competent court | Documentary evidence of assignment, not an internal allocation memo |
Ownership disputes between the two entities rarely turn on the demerger deed alone; they turn on evidence submitted at the right time. A claim raised late, without supporting paperwork, meets the same resistance described in When damages are demanded without evidence in detail: the forum asks for the record, not for the narrative behind it.
Forks
If the portfolio holds only registered marks and designs, the recordal route above is sufficient on its own.
If the portfolio also includes digital assets carrying the same brand — a token structure funding product development, for instance — the split follows a different logic, closer to the one set out in When the token funds development explained, because such an asset is not held in any trade mark register.
If a licence or distribution agreement predates the demerger and is silent on assignment, the licensee's consent should be sought before the recordal is filed, not after.
Limit
This page does not establish which registers actually hold the marks in question, in how many jurisdictions, or how many entries are affected by the split. That is a factual inventory, not a legal question, and it is answered by a search of the relevant registers, not by this text. A jurisdiction-specific asset inventory, such as Asset in Italy explained, sits in a different part of the site for that reason.
Verified
Checked against Regulation (EU) 2017/1001 (EUTMR) and Regulation (EU) No 608/2013. Reviewed on 4 March 2025.
Related publications
A related situation, where the register was never updated at all, is set out in When an assignment was never recorded and its limits.
FAQ
What is the first step when a portfolio must be split in a demerger?
Match every right in the portfolio against the demerger deed and confirm which entity owns it. Recordal with the office comes only after that list is settled, not before.
Which deadline is already running?
No fixed statutory deadline starts on the date of the demerger itself. The practical clock is set by third parties: licensees, distributors and enforcement counterparties who continue to rely on the register until it is corrected, and by any renewal date that falls while the recordal is still pending.
Who decides, and on what evidence?
The trade mark office decides whether to accept the recordal, based on the demerger deed and a supporting extract from the commercial register. A dispute over which entity owns a given right, if one arises, is decided on documentary evidence of assignment, not on internal allocation notes between the two entities.