Disposal of trademark rights

Disposal of trademark rights

Why

Why

The copyright holder of the trademark may be interested not only in using the trademark, but also in the disposition of the exclusive right to it, including the alienation and pledge of exclusive rights to the mark or the granting of the right to use it under a license or other contract.

Thus, the contract on the alienation of the exclusive right to the trademark concerns the transfer of such right in full from the copyright holder to the acquirer in relation to all or part of the goods and/or services for which the trademark is registered. Conversely , under a license contract the exclusive right to the mark remains with the copyright holder (licensor), and the licensee receives the right to use the mark within the limits determined by the contract.
For whom

For whom

1490 Note. According to Article 1490 of the Civil Code of the Russian Federation, contracts under which the exclusive right to trademark is disposed of must be made in writing. In this case, the alienation and pledge of the exclusive right to a mark, the granting of the right to use it under a contract, the transfer of the exclusive right to a mark without a contract are subject to state registration.
We are approached by clients who need support when preparing various contracts, as well as with paperwork for registration of the disposition of the right in Rospatent.
Details

Details

The key area of our activity in this service is the preparation of alienation contracts and licensing contracts and the subsequent registration of the transfer of rights and the granting of the right to use the trademark in Rospatent.

In addition, we help in formalizing franchising relations as part of a separate service. Our lawyers will develop a franchise contract, and specialists in the trademark department will register the granting of the right to use the mark under such a contract (if such registration is required by the specifics of the contract).


Our team will also provide support in the legal examination of contracts already drawn up with or without subsequent registration, and will register the pledge of the exclusive right to the trademark and transfer the right to the trademark without contract.
News and publications
WIPO Discussion on Artificial Intelligence
On July 7–9, 2020, the second round of the World Intellectual Property Organization Discussion on the Role of Artificial Intelligence in Determining Intellectual Property Policy was held.
Tobacco Company Trademark Infringement Dispute
Svetlana Uskova gave comments to Delovoy Peterburg on the dispute between two tobacco companies — Petro LLC (St. Petersburg) and Samarin LLC (Moscow).
Use of geographic names in the registration of trademarks
By the Resolution of the Presidium of the Court for Intellectual Property Rights (SIP) dated 12.09.2019 No.SP-21/31, a Review on SIP practice on issues related to the use of geographical names in the registration of trademarks was taken into account.