In our system, except for some specific cases, recordals have a declaratory effect rather than a constitutive one; this means that failure to record doesn’t affect the validity of the recordal’s object, but a successful recordal has the purpose to make such act enforceable against third parties, settling possible conflicts among many subjects interested in the same right and favouring the subject who first conducted the recordal.
In the same way, all changes regarding the IP owner data (name or address) have to be registered. Therefore, this is a fulfillment of obligations entailing those variations which are not causing any ownership change of IP rights.
- How to do a recordal procedure
In order to obtain a recordal, according to the Italian law, the applicant should file the so-called recordal petition to the competent offices, which is an application form with the relevant attachments according to art. 196 of the Intellectual Property Code.
Not only the recipient of such changes can legitimately request the recordal, but also the previous owner.
The recordal petition should report the following information:
- all basic details of the recordal’s recipient (for example, the subject who is getting the right following an assignment procedure);
- the type of change (assignment, mergers, transfers, succession mortis-causa etc.);
- the list of IP rights subject of the recordal.
The original or the certified copy of the deed declaring the change (deed of assignment, licensing agreement, company registration certifying the merger, act of entrustment, succession declaration, confiscation order etc.) or the deed establishing security rights (such as a deed of pledge) should be attached to the recordal form.
Moreover, it is necessary to provide the payment proof of the required fees and to respect the registry laws, if needed.
- When it is important to do a recordal
In Italy, doing a recordal is up to the right’s owner. Notwithstanding, IP rights should always be updated accordingly with the current owner’s information.
Even though in most cases there is no set deadline to record all changes, nor there is any sanction for delays to fulfill such requirement, all updates about the rights’ ownerships should be reported to the competent offices. For example, for trademarks, the renewal of registration is usually the best chance and right time to do such recordals.
However, delays in performing a recordal can surely have some consequences: as recordals become effective following the order the applications are lodged, this means that in case of conflict among more subjects requesting the IP right, who recorded it first, thus prevails.
Moreover, in some jurisdictions abroad, recordals have to be done immediately after the change has occurred; in these countries, delays in doing a recordal can entail late payment interests whose amount increases proportionally to the delay.
In general, recordals are necessary every time the trademark owner needs to show his/her right to administrative or judiciary authorities, in order to proof the active legal standing of the subject initiating the procedure.
- Why choosing an expert’s
As it is a very technical matter, it’s always better to seek assistance from an IP Attorney because:
- He/she knows the topic in depth;
- Can give an assessment and run a preliminary analysis of the IP rights portfolio affected by the ownership change, in order to suggest the most effective strategy to optimize costs and procedures;
- Can draft confirmatory declarations (such as assignment declarations) prepared ad hoc for each country, which are often useful to simplify the procedure and avoid translation costs;
- Can take care of all necessary formalities, such as documents’ notarization and legalization or fiscal registration, thus relieving the right owner of these obligations.
