Assigning Trademarks Across Countries: Madrid Recordals, National Filings and China's Rules

WIPO's Global IP Assignment Platform (GIPAP) is now in its pilot phase. The aim is one guided process for filing assignment recordals with several IP offices (news). The pilot runs from the third quarter of 2026 to the third quarter of 2027, and each office still decides under its own law whether to record a transfer. So for now, if you move a trademark portfolio to another group company, sell a regional business or buy a brand, each mark still has to be transferred through the route it was registered by. This article explains how Madrid assignments differ from national ones, and the rules in China, the EU and the US that most often cause trouble. It is general information, not advice on a specific case.

Step one: know how each mark was registered

The same brand may be protected through the Madrid System in some countries and by direct national filings in others (see Madrid or direct national filing). Before signing anything, list every mark with its registration number, the country or designation, the filing route, the recorded owner's name and address, and any licences, pledges or pending cancellation or invalidation actions. That list decides where each transfer is filed.

Madrid international registrations: one recordal at WIPO

• One request covers all designations: a change in ownership is recorded by WIPO's International Bureau, online through eMadrid or on form MM5. You do not file in each designated country. WIPO's fee is 177 Swiss francs per international registration.
• Partial transfers are possible: you can transfer only some designated countries, or only some goods and services.
• The new owner must be entitled: the transferee must be a national of a Madrid member, or be domiciled in one, or have a real and effective industrial or commercial establishment there. A transferee that meets none of these cannot be recorded as holder, so check the buying entity before signing.
• A designated country can refuse the effect: after WIPO notifies the change, a designated office has 18 months to declare that it has no effect in its territory, giving reasons and the legal basis. For example, a local condition may not be met, such as similar marks not being transferred together.

National registrations: one recordal per office

Marks filed directly with a national office need a separate recordal in each country, with different documents, languages, notarisation rules and timelines. Three markets to watch:

• China: under Article 42 of the Trademark Law, the assignor and assignee sign an assignment agreement and file jointly. Identical or similar marks the assignor holds for the same or similar goods must be assigned together. The transfer is published once approved, and the assignee owns the mark from the publication date. Foreign companies must act through a recorded Chinese trademark agency; see Registering a trademark in mainland China as a foreign applicant. For the procedure and common refusals, see buying or transferring a Chinese trademark.
• European Union: under Article 20(11) of the EU Trade Mark Regulation (2017/1001), until the transfer is entered in the register the successor in title may not invoke the rights arising from the registration. A signed but unrecorded assignment can stall an enforcement action.
• United States: under 15 U.S.C. §1060, an assignment is void against a later purchaser for value without notice unless it is recorded at the USPTO within three months of the assignment or before the later purchase. An intent-to-use application generally cannot be assigned before a statement of use is filed, except together with the related business.

Order of work for a portfolio transfer

1. Clean up the owner details first: if the owner's name or address has changed, record those changes before the assignment, or offices will ask why the assignor does not match the register.
2. Group similar marks country by country: where similar marks must move together, as in China, put every identical or similar mark for the same or similar goods on the same list, whether it came through Madrid or a national filing.
3. Use a master agreement plus short-form deeds: the master agreement lists the whole portfolio; short-form assignments per country go to the offices. Check each country's rules on signatures, notarisation, legalisation and translation in advance.
4. File by route: one Madrid request at WIPO, national recordals office by office. Payment milestones can be tied to recordal in the key markets.
5. Update everything downstream: customs recordals, marketplace brand registries, licence recordals, and the owner details on domains and social accounts.

FAQ

Can we use GIPAP now? It is still a pilot. WIPO has not published a full list of participating offices; the only one officially confirmed is the USPTO. It also does not replace national recordal or local agent requirements, so for now transfers are filed as described above.

Once WIPO records the change, is it effective everywhere? Not necessarily. A designated office has 18 months to declare that the change has no effect in its territory. Watch for notifications and be ready to fix the issue locally.

Can we keep using the marks during the transfer? Yes, but until recordal or publication the old owner is still the registered owner. If an infringement or a takedown comes up in the meantime, the old owner may have to act, so put a duty to cooperate in the agreement.

J&C Intellectual Property Agency, founded in 2008, is a CNIPA-recorded trademark agency and a member of the China Trademark Association. We handle trademark filings, assignments and customs recordals in China for foreign brands; see our trademark registration service.