All people face various trademarks daily. Their placement totally flooded our lives. We see them everywhere: on products, household items, even in transport, you regularly come across a look at a trademark. And each of them is associated with a particular product or service. A trademark is rarely seen on several products belonging to different fields. This is due to the fact that the use of a trademark has its own specifics. Trademarks are subject to state registration. What is a trademark license agreement? About it further.
What does all of this mean?
That is, if you want to use a specific image or slogan, you must secure this right for yourself legally, that is, get copyright rights. This order is necessary so that there is no confusion, and no other manufacturer could use your sign. By registering your trademark, the owner thereby protects himself and his copyrights from possible violations by another person. We remind once again that no one has the right to use a trademark owned by another businessman without his consent to it. Trademarks sell, but this transaction has its own specific features. Alienate only the possibility of its use on a reimbursable basis. Such a trademark license agreement is also being registered. All the nuances of concluding such an agreement on the use of a trademark will be discussed in this article.
Subject of the contract
First of all, you need to determine the boundaries of the subject of the contract, here we are talking about a trademark. But what is it? Under this designation there is a verbal, graphic or combined individualization of goods or services provided by any enterprise. That is, it is such a distinguishing feature that allows you to distinguish a given product or service from others. The trademark is undergoing state registration. The owner of a trademark has a certain set of features in relation to her:
- He has the right to apply a trademark in his activities.
- Has the right to complete disposal of it.
- Has the right to completely or partially prohibit other entities from using it.
How exactly can you conclude a trademark license agreement?
A trademark is intellectual property. To secure the right to it, you need to contact a special state body that deals with these issues. This state body is called Rospatent and is the only authority that considers such issues. The conclusion of a license agreement for a trademark (sample below) gives the right to use it for any group of services or goods.
Essential conditions
When compiling this document, it is necessary to remember that there are essential conditions that must be mandatory in the contract:
- Information about the licensed trademark (it must be extremely specific and contain precise indications of its type, verbal display and appearance as a whole, as well as the registration number of the trademark).
- Indications of all goods or services that will be produced under this trademark.
- All permitted trademark application methods.
- The size of the license fee.
How is the state registration of a trademark license agreement? We will tell you more about this below.
About the license agreement
The owner may wish or need to grant the right to use his trademark to other persons not related to entities that are entitled to dispose of the trademark. In most cases, this need arises with the expansion of the activities of the owner of the brand. This allows you to develop relationships with other actors.
What does a license agreement for the right to use a trademark provide?
In order to increase economic income, the right to use a trademark on the basis of agreements may be transferred to the other party. For this, there is a special procedure, the passage of which guarantees the parties to the contract the observance of their rights and obligations. Thus, a license agreement for a trademark is a document giving the right to use it in its activities, while it belongs to another market entity. In addition, the contract defines the main provisions governing the use of the trademark and other aspects of these contractual relationships.
So, the trademark owner has entered into a license agreement. What's next?
Features of the contract
The document is concluded by two parties: the owner of the statement of work (licensor) and the one who intends to use the rights to it is the licensee. The contract is concluded in writing and registered in accordance with the laws of the Russian Federation. The fee for registration of such an agreement is 13,500 rubles, it can be paid by any of the parties. We will talk about termination of the license agreement for a trademark later.
The right to TK can only be used by legal entities and individual entrepreneurs.
Exclusive and non-exclusive license
The license, in accordance with the concluded agreement, may be exclusive and non-exclusive. In an exceptional case, a license can only be issued to one person, while a non-exclusive one implies that several people have a license. By default, that is, if the contract does not mention that the license is exclusive, it is considered that the issued license is non-exclusive. This implies a license agreement for the transfer of a trademark.
Otherwise, the licensor cannot issue such licenses to other persons. The contract can be concluded for a period not exceeding the scope of the ToR. If such a condition is not specified in the contract, then it is automatically considered that the contract is concluded for five years. The owner retains the right of ownership, and if a citizen who has obtained a license sells substandard goods or provides unsatisfactory services, the license agreement for the use of the trademark is terminated ahead of schedule.
special instructions
As we said above, it is necessary that the contract contains all the information about the trademark, a list of goods or services that need to use the trademark, as well as regulatory methods for its use, how the remuneration will be paid. Special attention should also be paid to the fact that the license agreement should not contain the names of goods or services for which the trademark has not been registered. If this was done only for classes of goods, then the contract does not mention services and, accordingly, vice versa. There may be restrictions on the use of TK for a certain group of goods or methods of its application. It can be applied throughout the country, but in certain cases there may be territorial restrictions.
Registration of a trademark license agreement
The document is registered with Rospatent on the basis of the submitted package of documents within two to three months, starting from the filing date.Submits documents for registration by either side. Typically, the contract prescribes who is involved in registration and in what order the costs are divided. Rospatent submits documents in accordance with the following list: application for registration, license agreement for the right to use a trademark or an extract from the agreement, which contains a list of the main conditions of this agreement, a receipt on payment of state duty, a power of attorney in case of involvement of a representative, a copy of the document or extract from agreement (for storage in Rospatent). A similar procedure is the passage of registration of agreements to a license agreement (on changing conditions or termination).
If the requirements are violated
In case of violation of the requirements designated for registration of license agreements for the use of TK, additional requests will be sent to the parties or the refusal to register at all. Documents for registration can be provided during a personal visit or using the services of a trusted representative. The registrar checks the documents on formal grounds (the availability of all necessary documents).
Then, applications are either accepted for registration or returned to correct errors. There is also the possibility of filing an application in the form of mailing (sending by registered mail). The specialists of Rospatent analyze the contract for its compliance with the legislation of the Russian Federation, and also make the corresponding entries in the state register. After a standard period of time, the applicant must come to Rospatent and receive a certified contract.
So the registration of a license agreement for the use of a trademark is carried out. This procedure is simple, it can just take a long time.
License fee payment
The conditions determining the amount of remuneration are not necessarily included in the text of the license agreement; they can be set in a separate application, which may not be provided for registration with Rospatent. In practice, the method and amount of remuneration is determined very differently, it all depends on how the parties agree among themselves. The agreement of the parties may provide for a one-time payment of the amount of money, which will be fixed, the so-called lump-sum payment. A sample license agreement for the use of a trademark is presented below.
Payment schedule
But it is also possible to establish a specific payment schedule with regular payments of cash amounts - royalties. In this case, the amount of payments may depend on the proceeds and income received from the use of this trademark, for which an agreement has been concluded. Also, the size of royalties is associated with quantitative indicators of output: that is, the amount depends on the number of products released or sold. In order to be able to make such calculations of remuneration amounts, the licensee must provide detailed reports on indicators of interest to the licensor.
We reviewed the procedure for registering a trademark license agreement.