Calculo del índice de serviciabilidad presente (psi)

The legislation provides for two main types of paid agreements for the transfer of rights to trademarks:

agreement on the disposal of the exclusive right to a trademark; ƒ

a license agreement granting the right to use a trademark. ƒ

Agreements through which an exclusive right to a trademark is administered are sub- ject to state registration with Rospatent and enter into force from the date of such registration.

Without state registration, an agreement is considered null and void and does not give rise to legal consequences. Formally, an application for state registration of an agree- ment must be reviewed by Rospatent within two months, although in practice the registration of agreements may take considerably longer – up to eight months.

10.2.6.1 Agreement on Disposal of the Exclusive Right to a Trademark

Under an agreement on the disposal of the exclusive right to a trademark, the right holder transfers to the acquirer its exclusive right to the respective trademark in its entirety in relation to all or some of the goods, for the individualization of which it is registered.

That being said, the original right holder loses the right to independently use the trade- mark with respect to those goods and services that are covered by the agreement on the disposal of the exclusive right.

An agreement on the disposal of the exclusive right is assumed to involve compensa- tion, unless the agreement expressly provides otherwise. If a paid agreement on the disposal of the exclusive right does not contain a provision on the amount of the re- muneration or the procedure for determining it, the agreement is not consideredto be concluded. At the same time, the rules for determining a price, on the basis of typical prices for similar objects (Article 424 of the Civil Code), do not apply.

In a case of a material breach by the acquirer of the obligation to pay the remuneration within the term established by the agreement, the former right holder may file claim in court for the return of the acquirer’s rights to the exclusive right, and for compensa- tion for damages.

The legislation imposes one important restriction on agreements for the disposal of the exclusive right: they must not mislead consumers as to a product or its manu- facturer. What constitutes misleading is determined in each separate case by the court considering the dispute. This provision creates a certain risk for a party that has acquired rights to a trademark, as there is a possibility for abuse by a dishonest con- tracting party intending to contest the agreement.

10.2.6.2 License Agreements

Under a license agreement, the owner of the exclusive right to the trademark (licen- sor) grants the licensee the right to use the trademark within the limits established

by the agreement, with or without indication of the territory in which use is permitted applicable to a specific area of business.

A license agreement, like an agreement on the disposal of the exclusive right, may be concluded with respect to all or some of the registered classes of goods and services of the trademark.

License agreements are divided into two types:

ordinary (non-exclusive) license: the licensee is granted the right to use the trade- ƒ

mark, and the licensor reserves the right to issue licenses to other parties; exclusive license: the licensee is granted the right to use the trademark, and the ƒ

licensor does not reserve the right to issue licenses to other parties.

In both cases, the licensor retains the right to use the trademark in its own business. A license agreement shall provide for:

the subject of the agreement, with reference to the trademark whose usage has ƒ

been granted under the agreement, with an indication of the number and date of issue of the document certifying the exclusive right (certificate);

means of using the trademark. ƒ

A license agreement is assumed to involve compensation, unless the agreement ex- pressly provides otherwise. If a paid license agreement does not contain a provision on the amount of the remuneration, or on the procedure for determining it, the agree- ment is not considered to be concluded.

A license agreement shall indicate the territory in which the trademark may be used. If such territory is not indicated in the agreement, the licensee may use the trademark throughout the entire Russian Federation.

If a license agreement does not specify its term, the agreement shall be deemed concluded for five years. In a case of a termination of the exclusive right, the license agreement is also terminated. Transfer of the exclusive right to the trademark to a new right holder shall not constitute grounds for amending or terminating the license agreement entered into by the former right holder.

The licensee is obligated to ensure that the quality of the goods it manufactures or sells, and on which it places the licensed trademark, meets the quality requirements imposed by the licensor. The licensor is entitled to monitor compliance with this pro- vision. The licensee and the licensor bear joint and several liability with respect to claims filed against the licensee as the manufacturer of goods.

The licensee is obligated to submit, to the licensor, reports regarding the use of the trademark, unless otherwise specified in the license agreement.

It should also be noted that license agreements may be implemented as separate agreements or as part of a commercial concession (franchising) agreement, under which rights to use a range of exclusive rights are transferred.

10.2.6.3 Sublicense Agreements

The licensee may grant a third party the right to use the trademark (a sub-license agreement) only with the licensee’s written consent.

Under a sub-license agreement, the sub-licensee may be granted rights to use the trademark only to the extent that such rights and means of use are provided for by the license agreement for the licensee.

In all other respects, a sub-license agreement is subject to the same rules as a license agreement.

10.3 Brand