Licensing and assignment of rights

What is happening

The trademark is registered to the owner personally or to a separate group company, while an operating company uses it. The use needs to be lawful and the royalties justifiable.

Software or a website was built by a contractor or a freelancer, and it turns out the contract says nothing about rights or gives the company only a right of use. An investor or buyer asks awkward questions in due diligence.

A franchise, distribution or joint product: a partner is to use the company's brand and materials, but within set limits, in a set territory and subject to quality control.

What the law says

• Under an assignment agreement the exclusive right passes to the acquirer in full; under a licence agreement the rights holder merely grants a right of use within agreed limits. Both are governed by Part Four of the Civil Code.
• A licence may be exclusive or non-exclusive. If the agreement does not state the territory, use is permitted throughout Russia, and if it does not state the term, it is deemed concluded for five years.
• A paid licence agreement that does not state the royalty or how it is determined is deemed not to have been concluded.
• An assignment of a trademark, invention, utility model or industrial design, and a grant of the right to use one, must be registered with Rospatent. Without registration, the transfer or grant is deemed not to have taken place.
• Rights to works created by employees and contractors are allocated by default under the Civil Code rules on works made in the course of employment and to order. It is safer not to rely on those defaults but to set out the allocation of rights expressly in the contracts.
• A trademark may not be assigned if the assignment could mislead consumers about the goods or their manufacturer. This needs to be borne in mind when moving a mark within a group.

What we do

• We clarify the purpose of the deal and choose the form: assignment, exclusive or non-exclusive licence, or sublicence.
• We check the chain of title: who created the asset, how the rights reached the licensor, and whether there are pledges or earlier licences.
• We draft the agreement: scope of rights and methods of use, territory, term, royalty, quality control and liability.
• We register assignments and grants of rights of use with Rospatent and deal with its queries.
• We put in order the rights to works created by employees and contractors: supplementary agreements and assignments.
• We support transactions where IP is a key asset: sale of a business, investment rounds, franchising.

What we will need from you

• Documents for the asset: the trademark certificate, patent, or software registration certificate if there is one.
• The contracts under which the asset was created or acquired: employment, contractor and author agreements.
• A description of the deal: who is transferring rights to whom, for what purpose, in what territory and for how long.
• Commercial terms: the amount of the royalty and how it is paid.
• Details of existing licences and pledges, if the asset has been transferred before.