Intellectual Property and Patent & Trade Mark Protection

Intellectual Property and Patent & Trade Mark Protection

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  • Thomas Schatz
    Thomas Schatz
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    Trademark Licensing Agreement in addition to Distribution Agreement
    Dear Colleagues

    From Russia I got the recommendation to enter into a seperate Trademark License Agreement with a sole Distributor in addition to the existing Distribution Agreement. This Trademark License Agreement has to be registered.

    Background of this recommendation: Without a seperate License Agreement the use of the trademarks by the distributor will not be made in favour of the trademark owner. Potential risk: The distributor can apply for the cancellation of the registered trademarks due to non-use.

    Have you got similar recommendations from Russia or from other jurisdictions in which the registration of trademark license agreements is mandatory.

    I am highly interested in further discussions

    Regards
    Thomas
    • 08 Jul 2011, 01:22 am
  • Elvira Volkova
    Elvira Volkova    Group moderator
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    Re: Trademark Licensing Agreement in addition to Distribution Agreement
    Dear Thomas,

    According to the i.2 of the Article 1486 of the Civil Code of the Russian Federation:

    "the use of a trademark shall be considered to be used by the rightholder or other person to whom such a right has been granted on the ground of a license contract in accordance with Article 1489 of the present Code, or by another person using the trademark under the supervision of the rightholder provided that the use of the trademark is conducted in accordance with Paragraph 2 of Article 1484 of the present Code, with the exception of cases when the respective actions are not directly connected with the introduction of the goods into civil circulation and also the use of a trademark with the alteration of individual
    elements not affecting its capability of distinguishing and not limiting the protection granted to the trademark."

    A Distribution Agreement implies selling of the goods by the Manufacturer to the Distributor that means introduction of the goods into civil circulation by the Manufacturer.

    Taking into account the above-indicated I agree with my colleagues from Russia and recommend to conclude a separate Trademark License Agreement with the Distributor in order to protect your trademark from pre-term termination of its legal protection due to non-use intitiated by the third patries.

    According to the Article 1490 of the Civil Code of the Russian Federation the Trademark License Agreement must be recorded in the Patent and Trademark Office of Russia (ROSPATENT).

    English version of Part IV of the Civil Code of the Russian Federation can be found here: http://www.rupto.ru/en_site/policy_law/Civil_Code.pdf

    I hope the above information will be helpful for you.

    Best Regards,

    Elvira
    • 08 Jul 2011, 10:56 am
  • Thomas Schatz
    Thomas Schatz
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    Re^2: Trademark Licensing Agreement in addition to Distribution Agreement
    Dear Elvira

    Thank you for the valuable information. I have still one question:

    According to the German Trademark Act and the corresponding jurisdiction the import of branded products by a distrbutor, notwithstanding these products will then be sold in Germany, will be cosidered as use of the trademark. Is there any similar jurisdiction in Russia? The consequence would be that the delivery to a company situated in Russia, provided Incoterms like "DDP, DAP or DAT" are used, would be sufficient to prove the use of a brand.

    Thanks a lot for your support.

    Best regards
    Thomas
    • 08 Jul 2011, 4:11 pm
  • Elvira Volkova
    Elvira Volkova    Group moderator
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    Re^3: Trademark Licensing Agreement in addition to Distribution Agreement
    Dear Thomas,

    According to the Trademark Legislation of Russia disntibution of the products marked by the trademark in the territory of Russia with the indication of the trademark holder as the manufacturer on the products is considered to be the usage of the trademark by the trademark holder.
    The usage of the trademark on the products by the distributor (or by any other person) without the indication of the trademark holder as the manufacturer can be considered to be the trademark usage by the trademark holder in case of conclusion of the trademark license agreement between the trademark holder and the distributor and recordal of this agreement in ROSPATENT.
    In case of the usage of the trademark by the distributor without the indication of the trademark holder as the manufacturer on the products and initiation of the action of pre-term termination of the trademark legal protection on the basis of non-use by a third party the distribution agreements concerning Russia containing the information about the products marked by the trademark can be used for proving the trademark usage by the trademark holder in the territory of Russia. However on the absence of the duly recorded license agreement the decision of the Chamber of Patent Disputes of ROSPATENT (where the case will be considered) in favour of the trademark holder cannot be guaranteed.

    Best Regards,
    Elvira
    • 08 Jul 2011, 8:40 pm
  • Thomas Schatz
    Thomas Schatz
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    Re^4: Trademark Licensing Agreement in addition to Distribution Agreement
    Dear Elvira

    Thank you for the valuable information.

    Best regards
    Thomas
    • 10 Jul 2011, 4:01 pm