The owner of a trademark registered with Rospatent, who has the exclusive right to use it, can dispose of it at his own discretion. For example, he can sell it by entering into an agreement with the buyer Alienation agreement (Purchase and sale agreement) or grant him the right to use it under a license agreement.
It should be noted that the copyright holders of a trademark in Russia can be not only LLCs, but also individual entrepreneurs and individuals, each of whom can transfer the rights to a registered trademark to each other. The reason for transferring rights to a designation may be a change in the type of activity of the company, rebranding, sale of a business, etc.
The exclusive right to a designation can be completely transferred by concluding an Alienation Agreement (Purchase/Sale Agreement) in accordance with Article 1488 of the Civil Code of the Russian Federation. In this case, the agreement specifies the conditions for the parties, the registration number of the mark, a list of goods and services in respect of which the right to use it is alienated, the term of the agreement, the amount and procedure for payment of remuneration, as well as the details of the copyright holder and acquirer of the designation. If the acquirer purchases several trademarks from one seller, then they are included in one Sales Agreement.
A set of documents is sent to Rospatent, including the Alienation Agreement, which specifies the details of the trademark registration certificate, the cost and procedure for payment by the acquirer of the right, as well as the conditions for the transfer of the designation, a document confirming the payment of the state duty, and an application for registration of the agreement for the alienation of the exclusive right. The agreement is submitted in three copies - two for the previous and new copyright holders, the third for storage in Rospatent. If the documents are submitted by a representative, then the set of documents includes powers of attorney signed by both parties.
It is possible to transfer the exclusive right to all classes of the ICGS issued under the designation or to part of them, or to transfer the right to several persons, but only in relation to heterogeneous goods and services. That is, several entities can use the mark at once, but each of them will have the opportunity to use it only for a certain class of the ICGS.
After making changes to the register, the exclusive right to the trademark is transferred to the new owner, who receives a certificate of registration of the trademark.
If, nevertheless, the owner of the mark wants to retain the exclusive right to use the trademark, but, nevertheless, allow another entrepreneur to work with the sign in order to increase recognition of his brand, he can enter into a licensing agreement with him. As in the case of concluding a Sales and Purchase Agreement, license agreement is concluded only with a legal entity and is registered with Rospatent. In this case, the license can be exclusive, allowing only one person to use the trademark, or non-exclusive, if the copyright holder (licensor) has issued several licenses for different legal entities.
The license agreement specifies the list of services and goods in relation to which the mark will be used, as well as the amount and procedure for transferring the license fee. The transfer of rights under a license agreement can be carried out for any period, but not exceeding the validity period of the right to the designation. However, if the contract does not specify a period, then the license agreement will be considered concluded for 5 years. The license agreement can be terminated unilaterally and early if the terms of use of the designation are violated.
In some cases, exclusive rights to a trademark are transferred by concluding Franchise agreements (commercial concession). In this case, the franchisor (franchise seller) remains the full owner of the designation, and the franchisee (purchaser) gets the opportunity to conduct business using the franchisor’s technologies and standards, as well as use its trademark.
The Franchise Agreement must indicate the size of the lump sum payment (one-time payment when purchasing a franchise), the size and frequency of royalties (payment to the franchisor from the franchisee’s profits), the duration of the agreement, the rights and obligations of the parties, etc. A commercial assignment agreement can be made indefinite, but its duration will depend on the period of validity of the right to the trademark.
The exclusive right to a trademark can also be exercised by concluding Pledge agreements. In this case, the copyright holder continues to fully use his trademark, and the second party (the pledgee) cannot use it, but only until the financial obligations to him in the person of the copyright holder are violated. In this case, the rights to the trademark are completely transferred to the pledge holder.
When concluding a Pledge Agreement, it is necessary to indicate in it the value of the trademark, restrictions on its use by the copyright holder and the deadlines for fulfilling obligations and the circumstances under which the designation can be transferred to the pledgee. In this case, along with the Pledge Agreement (3 copies), an application for registration and a check for payment of the fee are attached to the package of documents. The pledge agreement, like all of the above agreements, must be registered with Rospatent.
Transferring the exclusive right to an object of intellectual property is a very responsible process in which it is necessary to take all necessary steps so as not to harm your business. Therefore, it is important to use the help of experienced specialists who will quickly and competently carry out the entire range of work to organize the legal transfer of rights to a trademark.
