Alienation of the exclusive right to a trademark in Russia

The term "alienation" used in relation to a trademark means that by transferring (assigning) or selling the rights to this type of intellectual property, the original owner loses them completely. Such an action is appropriate for the purposes of:

• business restructuring;
• taking advantage of the sale;
• retention of rights in the situation of liquidation of the company by transferring rights (for example) to a subsidiary or sole proprietorship (director or other person);
• saving the successor in time for registration of the mark.

Registration of trademark alienation agreement

According to the rules governing this process, the exclusive right to trademark may only be transferred to a legal entity or entrepreneur, a natural person is excluded in this case.

Transfer of a trademark for use is made on the basis of an agreement on alienation of trademark.

When drafting the agreement, the following conditions must be kept in mind:

• the subject matter of the agreement provides the numbers of certificates, classes of the Nice Classification and the goods/services for which the agreement is made;
• the value of the transaction for the sale of the trademark is prescribed, since a gratuitous transfer of rights to the trademark is excluded by law due to the recognition of such a transaction as a donation, which contradicts the purpose of entrepreneurial activity,
• assignment of rights to a trademark under the contract of alienation implies the transfer to another person not the trademark itself, but the rights to it.

Transaction features you need to know

Before entering into an agreement, it is advisable to verify that the trademark has been used in commercial activities for a period of 3 years prior to the transaction, since there is a risk of the acquired mark being cancelled due to non-use, should interested parties be found in it.

The state duty, which is charged for the contract of alienation of the trademark, can be paid by either party.

If the right holder has very similar trademarks in the same classes of the Nice Classification, it will be necessary to assign them all, as the law does not allow different owners to have very similar trademarks due to the risk of the possibility of misleading consumers.

Stages of the transaction to alienate a trademark

Stage 1. TK Cost Estimation.

Stage 2. Preparation of the contract.

Stage 3. Drawing up an application to be submitted for foreclosure.

Stage 4. Payment of the patent fee.

The procedure for alienation of rights to trademarks takes about three months (the usual period is 45 business days). During this time, the FIPS checks the paperwork and the transaction on the merits.