Because a trademark is an intellectual property and an intangible asset, it can be bought and sold. Purchasing a trademark for both Startups and Owners of successful businesses is an important step
Thus, purchasing a registered trademark makes it possible to:
- save time and money on developing a designation and its registration;
- avoid time and material costs for advertising and brand promotion if the trademark is already successful with consumers;
- use it in a timely manner when entering the market, which contributes not only to the successful development of the business, but also ensures its protection;
- avoid violating the rights of third parties.
However, before you start purchasing a trademark, you need to check the availability of its registration number by number in the open register of trademarks on the website of the Federal Institute of Industrial Property (branch of Rospatent) and its validity period or use the linkmark search service.
It is important to identify the encumbrances of a trademark in the form of the presence of a concluded license agreement, which gives the right to exploit the trademark upon fulfillment of specified conditions for a certain period, a commercial concession agreement (franchise) and/or a pledge of an exclusive right. All this information is reflected in the Trademark Register. In addition, it is necessary to ensure that the trademark is not the subject of a judicial dispute or administrative proceeding.
The purchase of a trademark is carried out only by concluding a written alienation agreement on the basis of Articles 1232 and 1488 of the Civil Code of the Russian Federation to transfer full rights to the mark to another person. You can acquire an exclusive right for all goods or services or for individual ones, but in the latter case, the original copyright holder can use it for goods or services of the remaining classes of the ICLG.
When concluding an alienation agreement, it is necessary to carefully check the details of the counterparty’s legal entity, the trademark number, the scope of rights (that is, in which classes of the ICLG the trademark is alienated) and indicate all information about the trademark, acquirer and seller, as well as indicate the list of alienated goods or services and the amount of remuneration.
After concluding an alienation agreement, the patent fee is paid, after which the alienation of the right to a trademark is registered with Rospatent and the buyer of the designation becomes its copyright holder.
If a license agreement, commercial concession agreement or pledge of an exclusive right is concluded, then they are also registered with FIPS (Rospatent), otherwise they will not be considered valid.
Cases of refusal to register when purchasing a trademark are possible if:
- the designation coincides with the original part of the seller’s brand name;
- the original owner retains the right to the trademark in relation to similar goods;
- the designation contains a geographical indication that does not coincide with the geographical name of the region where the buyer intends to produce this product.
