License Agreements: Part II

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來自 National Research University Higher School of Economics 的課程

Russian Trademark Law in Global Perspective

45 個評分

National Research University Higher School of Economics

Russian Trademark Law in Global Perspective

45 個評分

Learn about legal framework of trademark registration, protection and enforcement in Russia. You can also compare Russian approach with international standards enshrined in relevant treaties and discover problematic arears of trademark protection in the Russia. This course is on legal regulation of trademark protection in Russia. It explains the process of acquiring trademark in Russia, alternatives to trademark protection (such as firm names, trade names, names of origins), requirements for trademark validity, conditions under which trademarks are protected in Russia, scope of excusive trademark rights protection, peculiarities of assignment and licensing practice in Russia. The course also focuses on issues of trademark infringement, criteria applied by the Russian courts and relevant practice of the Russian Intellectual Property Court. It describes different remedies available to the trademark holders, including calculation of statutory damages under the Russian law for trademark infringement. Russian trademark legislation and case law do not have long historical roots. This is the reason why this area of the Russian law may be characterized as very dynamic. Examples will be given to illustrate successful legal solutions (for example, trademark protection in domain names, exhaustion of trademark rights) and ongoing search for proper and balanced regulation (for example, regulation of parallel imports, antitrust regulation in trademark law, application of fair use doctrine o trademarks).

從本節課中

Commercial Exploitation of Trademarks

Trademark owner has many options to exploit its trademark. Among them are self-exploitation, assignment, license contracts, franchising, distributorships agreements and many others. Russian law contains several imperative requirements that parties to such transactions must comply with. They concern form of a contract, registration of transfer of rights, financial provisions and some others. Failure to take them into account may lead to invalidity of a contract or ineffectiveness of transfer of rights.

Commercial Exploitation of Trademarks: General Overview and Assignment: Part I11:01

Commercial Exploitation of Trademarks: General Overview and Assignment: Part II9:26

License Agreements: Part I10:46

License Agreements: Part II9:21

Franchise Agreements: Part I10:07

Franchise Agreements: Part II8:36

與講師見面

Vladislav Starzhenetsky
Associate Professor
Department of International Public and Private Law

Now we'll learn,

briefly discuss financial

terms of the licence agreement.

Under article 1235 of the Russian Civil Code,

it is presumed that a trademark license is concluded on remuneration basis.

So the licensing, which pays something for the use of the trademark.

But of course, this is optional and parties may decide otherwise.

So, this is covered by freedom of contract principle.

But in case they would like to mention this remuneration in the contract.

There may be different kinds of ways how it can be done.

It can be a fixed amount of payment, periodic payments,

interest deductions, or any other forms.

And here at the Russian legislation, it's very flexible so,

this is basically any way you want to describe this close.

And perhaps one more important remark is that during registration all

these financial terms may be kept by the parties confidential.

And as we have seen there is no duty to disclose this

information during registration procedure.

They are not mentioned, this financial provisions

among mandatory in this list for registration procedure.

So in other question here is whether gratitudes or

license of women would be valid until the Russian ball or not.

And there is only one restriction under Article 1235 of

the Russian Civil Code which says that license agreement between

commercial entities would be invalid if it represents an exclusive license for

the entire term and territory of trademark protection.

And that's basically the only red line that we may not cross.

Other license that does not fall into this definition is permitted for

example any non-exclusive license that is protrude will be.

And any exclusive license limited to in geographic terms or

in terms of time, for example, which was given only for

one year or two years would still be okay.

Perhaps, we should also discuss quality provisions and

this is a very important when we now talk about licence agreement.

Under mandatory provisions of the Article 1489 of

the Russian Civil Code, licensee has a legal duty to ensure

that the quality of produced goods and sold goods or

provided services meet qualitative requirements set by the licensor.

This is one the specific features of the license agreement.

In this regard, licensor has a right to monitor and

control compliance with this provision And the license contract may provide for

different inspection proceedings, reports for the licensee,

any other way the licensor would wish to control actions of the licensee.

This is a discretion and provision if parties would like to

decide otherwise, it would be possible.

If they want to exclude this one-to-one control

powers of the licensor, they may do that.

And perhaps one more remark concerns liability issues.

And Russian law provides that licensee and licensor are jointly liable.

with regard to third parties claim as manufacturers of the goods or

service providers.

This is a specific partition included in the Russian board for

protection of the consumers.

And the justification for

that is not consumers may regard use of the trademark by licensee and

licensor as one single business and they do not have to care and

ask every time who is actually using this trademark.

For consumers it's just not important.

And that's why licensee and

licensor are regarded as jointee in rival when regard to such claims.

Now, let's turn to Exclusivity provisions.

Parties of course are free to include in a license agreement any

provisions they seem to in order to secure exclusivity of the license.

These may be provisions concerning relations of the parties with

other competitors and specific applications not to

enter into similar agreements with other parties and etc.

And the most important question in this regard is whether licensor retains any

rights to use a trademark in the case of granting an exclusive license.

In others words, is a paralleled use of a trademark by licensor and

licensee, is possible and admissible under the Russian law.

In the past, that was the general rule,

I mean the parallel use of a trademark by a licensor and licensee.

But since 2014, provisions of the Russian law have changed.

And now article 1236 of the Russian Civil Code provides that

licensor is precluded from using IP right to the extent to which such right

is already granted to the licensee under exclusive license.

So, this parallel use is treated negatively by the Russian Civil Code.

However, this provision is again of this positive character.

And if parties have important reasons to

provide otherwise, they can still do it.

Let's discuss Restrictions.

Other instances when trademark license is not allowed under the Russian law,

and there is only one exception that is included in

Article 1489 of the Russian Civil Code.

And this stipulates that a license agreement concerning

a trademark which includes as an element of a trademark,

a part of a trademark, designation of the place of origin is

allowed only if the licensee is entitled to use such designation.

It means that licensee should be one of the right holders of

such a designation in order to use under a license agreement,

a trademark that contains such a designation.

And if this condition is not fulfilled, a rough patent may refuse

to register such transfer of trademark fliers from licensor to licensee.

And now let's turn to Special Remedies provisions in a license contracts.

Perhaps the most frequent violation of license agreement in Russia and

worldwide is non-payment of remuneration by a licensee in the due time.

And such non-payment may amount of course fundamental breach of contract.

And I would highly recommend to include special and

detailed provisions concerning such a situation in a contract and

how the licensor, which is a guarantee it's right to obtain such payment.

A remuneration, but in the case a contract contains,

no such specific provision, licensor may still avail to

remedies provided by Article 1237 of the Russian Civil Code.

And this article says that in such a situation,

licensor is entitled to declare the contract avoided unilaterally and

may claim damages from the licensee.

And if licensor would like to do that he would have to notify the licensee

about its intent to avoid the contract and such avoidance automatically

becomes effective after exploration of 30 days period,

after receipt of the relevant notification by the licensee.

Of course unless licensee complies with it's application and

pays grant remuneration unto the licensor.

[MUSIC]

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