Industrial Property Law

The assignor/transferor is subject to two obligations: delivery and guarantee of the trademark to the transferee (Article 1603 Civil Code). Delivery is effected by the physical handing over of the deed to the assignee, or by the authorized use that the latter makes of it (Art. 1607 Civil Code).

The transferor also undertakes to guarantee to the transferee the peaceful enjoyment of its right (Art. 1625 et seq. Civil Code). He thus is bound to hold harmless the transferee from any interference with his enjoyment of the trade mark, either in fact or in law, for example by imitating the trade mark or by using it. The hold harmless clause is a public policy warranty, and any clause purporting to exclude the hold harmless clause in the contract is void (Art. 1628 Civil Code). He must also guarantee the assignee against the acts of third parties who would bring an action for recovery or infringement. This guarantee is valid only if the loss suffered by the assignee as a result of the third party's action is not due solely to his fault . This is the case in particular when the latter knowingly puts infringing products on sale .

The assignee is obliged to pay the transfer price (Art. 1650 Civil Code). The parties to the agreement are free to determine the price of the assignment, which may be a lump sum or proportional to the exploitation of the trademark.

Cass. com, 8 October 2002, LawLex202200002945JBJ

Cass. civ, 10 May 1995, LawLex202200000768JBJ.

125. Obligations of the parties