A trademark (TM) refers to objects of intellectual property and serves to individualize goods or services. Its owner can dispose of the designation at his own discretion, including transferring the rights to use it to other persons. In most cases, marks are registered by manufacturers of goods, but in some situations the copyright holder may be another person.
Reasons for
there may be several:
- no need for it when the company’s brand or direction of its activities changes due to intense competition in the market, in the absence of expected profits, or a decrease in demand for goods or services provided by the company;
- according to the owner of the company, the sign is outdated and the owner wants to change it or sell it along with the business;
- the presence of another, previously registered designation, with which the sign is confusingly similar. In this case, the applicant can contact the patent holder to obtain a letter of consent, and if the copyright holder does not agree to provide it for free, then you can offer him to buy a trademark.
Sometimes manufacturers and entrepreneurs develop and register trademarks to identify products in hopes of producing them in the future. But if plans cannot be implemented, then trademark rights holders are forced to sell them. A forced sale is also possible under the pressure of external circumstances, for example, if a mark has been used for a long time under a license or a franchise agreement, and its copyright holder has not found a use for it within three years from the date of publication of registration information, which creates the risk of early termination of its validity. Or there is a threat of reputational risks due to improper performance of services or production of low-quality goods by companies that have entered into a licensing agreement or franchising agreement with the owner of the mark.
Full transfer of rights to a trademark registered with Rospatent is carried out upon its sale with the execution of an alienation agreement on the basis of Art. 1448 of the Civil Code of the Russian Federation.
You can sell technical specifications for all classes of the International Classification of Technical Regulations issued under it, or for part of them. In this case, the right to use trademark can be transferred to several persons, but only in relation to heterogeneous goods and services. That is, several entities will be able to use the mark at once, but each of them will have the right to apply the technical specifications only for a certain class of the International Classification of Goods.
The signed agreement must be registered with Rospatent, otherwise it will be declared invalid. To register it, it is necessary to collect a package of correctly executed documents (an agreement with comprehensive information about the patent holder and the buyer, a certificate of registration of the trademark, a payment document confirming payment of the duty, and if the documents are submitted by a representative, then a power of attorney for him).
It is also necessary to remember that the alienation of the exclusive right to a trademark during its sale is regulated by the legislation of the Civil Code of the Russian Federation. Thus, an agreement on the alienation of an exclusive right must be concluded in writing and be compensated (the agreement stipulates the amount of remuneration, the procedure and timing of its payment on the basis of Article 1234).
The contract must indicate the possible consequences if the acquirer violates the obligation to pay remuneration, otherwise, in the event of violation, the previous owner may demand compensation through the court for losses and regain the exclusive right to the TK.
The average waiting period is 2–4 months, after which the previous and current copyright holders receive a Notice of Registration, a copy of the agreement and an attachment to the current certificate of trademark.
All changes to the technical specifications are entered into the state register of trademarks and the rights to it are transferred in full to the new owner.
Risks when selling
There are certain risks when selling technical specifications. Therefore, it is important to understand how interested potential buyers are in purchasing a sign, to assess its real value and the risks of selling it.
For example, there are a number of restrictions in the legislation that may prevent the sale of trademarks, despite the agreement and application being duly drawn up and in accordance with the requirements of regulatory legal acts and the duty paid on time.
Thus, one of the reasons that serves as an obstacle to the sale of trademark is its similarity to the point of confusion with another previously registered designation, which can mislead the consumer regarding the product or its manufacturer (Article 1488 of the Civil Code of the Russian Federation). This situation may arise for the copyright holder of a series of marks and the sale of one of them may mislead the consumer due to their similarity due to some common dominant element.
The sale of trademark may be hindered by the fact that the copyright holder has a trade name or commercial designation, elements of which may be part of the trademark, or the owner of the mark is the administrator of a domain name that is part of the alienated trademark or coincides with it.
In this case, the seller will be obliged to sell to the acquirer the marks that form the series, change its corporate name, abandon the commercial designation or domain name, etc.
If the copyright holder is forced to renounce his rights to other objects associated with the alienated trademark, then the cost of the transaction, taking into account all costs (change of the company name, cost of duties for alienated marks and other intellectual property, etc.) may be increased.
To summarize the above, it is necessary to pay attention to the fact that when trying to independently sell trademarks, the copyright holder often makes mistakes that can lead to large financial losses. Thus, difficulties are most often associated with errors in drawing up an alienation agreement and in choosing classes of the International Classification of Standards. There is also often a need to communicate with Rospatent experts, and untimely responses may be the reason for refusal to register an agreement.
Therefore, in order to safely and effectively complete a transaction, you need to contact specialists.
Erfis specialists can promptly answer all questions related to the sale of trademarks, accompany the client at all stages of paperwork and provide legal support.
