Since the development and registration of trademarks requires time and the involvement of many specialists, then it is most profitable to purchase a ready-made trademark. Ready-made trademarks are sold in online stores directly from its owner or at bankruptcy auctions, as well as by registering a canceled trademark due to its prolonged non-use or other reason. In this article we will look at features of acquiring a trademark by alienating the exclusive right to it and possible errorsand.
First of all, when purchasing a trademark, it is important to pay attention to its validity period indicated in the registration certificate. It should be ten years.
If it expires, it is important to promptly renew it for another ten years, having previously paid the fee. In this case, it is necessary to decide in advance who will renew the validity of the sign - the seller or the buyer.
It is very important to pay attention for which classes of the ICLG and the corresponding goods and/or services provided is the trademark registered, since the scope of protection is limited by them. It is important to carefully read the indicated classes in order to avoid making a mistake and wasting time and money, since the new owner, having mistakenly purchased a trademark for goods that are not produced or sold by him, may suffer significant financial losses for advertising, marketing, and production, since the products he produces that do not correspond to the purchased trademark may be considered counterfeit and will be subject to confiscation.
Once the buyer is satisfied that the mark meets all of his requirements, he can conclude an Agreement on the alienation (assignment) of exclusive rights to a trademark. In accordance with Article 1488 of the Civil Code of the Russian Federation, under “an agreement on the alienation of the exclusive right to a trademark, one party (the copyright holder) transfers or undertakes to transfer in full the exclusive right to the corresponding trademark belonging to it in relation to all goods or in relation to part of the goods for the individualization of which it is registered, to the other party - the acquirer of the exclusive right.”
Typically, the reasons for the transfer of exclusive rights to a trademark in full are a change in the scope of activity of its previous owner, the liquidation of an individual entrepreneur or LLC.
It should be remembered that the Alienation Agreement is mandatory is concluded in writing and registered with Rospatent.
There are certain restrictions when concluding an Agreement:
- refusal to register it is possible in cases where it may cause misleading the consumer regarding the product, its manufacturer or place of production;
- buying a trademark that imitates a geographical indication or appellation of origin of a productto which protection has been granted, it should be remembered that alienation of an exclusive right is only possible if the acquirer has the exclusive right to such a geographical indication or name;
- legal protection of a trademark that includes a geographical indication or appellation of origin of a product may be terminated early at the request of any interested party in the event of termination of the right to use this geographical indication or appellation of origin of a product.
After signing a written Agreement on the alienation of the trademark and its registration with Rospatent the new owner receives a certificate of registration for the purchased trademark.
In conclusion, I would like to add that when purchasing a trademark, it is important to check whether the previous owner has previously concluded a licensing agreement or a franchise agreement with other persons. If they exist, a conflict of interest may arise, which will cause legal disputes due to the loss of a monopoly in the market, and therefore significant financial losses.
Thus, before concluding a transaction to purchase a trademark, it is important to carefully familiarize yourself with its history and carefully study and analyze all available documentation, which is only possible with the involvement of patent attorneys and intellectual property lawyers.
