Trademark Registration

Trademark is a symbol used to individualize goods and/or services provided by market participants, both legal entities and businessmen.

This definition is very broad and it hides plenty of nuances. In one case it can be presented by a picture or by a word, in another one it can be a logotype with several elements.

Russian law states that there are different types of a trademark: a verbal, graphic etc. At the same all types of trademarks and its colors can be combined.

Trademark is a directly connected to a product asset. Its value mounts with time and product promotion.

A bright memorable trademark determines product success future and business success in many aspects. A customer would prefer a product marked with a famous brand rather than one of a dubious company.

Trademark needs to be protected as any other value. A registration is the only legal way to secure a trademark from infringements and to confirm its uniqueness. A certificate is issued to a trademark owner for 10 years and it can be enlarged for other decades repeatedly.

A trademark owner can use it at his pleasure including a right to sell or to mortgage it, to allow or to forbid its use.
Any sale or license have to be registered in the Patent Authority.

Trademark registration is not just a formal procedure. Of course, it is essential that all documents have to be drawn in compliance with formal requirements. Still, at the same time one needs to be very creative and look for the best solutions in full measure, because applicant’s interests have to be considered carefully in the context of market competition. It is necessary to value originality of a future trademark and probability of its registration, to help an applicant to determine the sphere of its use. Some additional work and modification of a firstly-offered trademark is often required so that the chances of registration and visual perception would be better. Such modifications are made after a research on similarity and registrability of a future trademark.

Some time and knowledge of law are required to pass all formal procedures. This is why it is a usual practice to entrust specialists – patent agents - with a procedure of registration.

Trademark registration is the main line of activity. Our specialists have all necessary qualifications and experience so that a declared image meets all requirements and registration finishes as fast as possible according to the law. A professional trademark registration guarantees absence of conflicts with competitors.

Card Patent provides a full complex of services in:

  • Examination of a sign on preregistered trademarks and originality of a performance;
  • Preparation and making a trademark application;
  • Correspondence with Federal Institution of Industrial Property experts;
  • Receipt of a trademark certificate;
  • Making alterations in the Certificate and in Federal Register of Trademarks;
  • Prolongation of a trademark each decade.

  • trademark name or description
  • full applicant name, registration number
  • full legal address
  • telephone number, fax number, email address
  • bank details
  • code
  • director (appointment, full name)
  • list of goods

Universal smile day is celebrated in the first Friday of October. This holiday appeared in 1999 and it is dedicated to the invention of a ‘smile’ –image of a smiling yellow face.

Smiley was created by Harvey Bell in 1963 on demand of the insurance company that had ordered him to design a logotype. Bell received 45$ for his idea of a smiley.

Several months later smiley gained popularity and after having been placed on insurance badges it was copied and depicted everywhere: from match-boxes to stamps.

Speaking about the author, it is necessary to say that he had never tried to patent his picture and assume his right for smiley. Vice versa, Bell was happy about the fact that his creation had become known all around the world and anyone could use his smiley.


In 2002 the architectural appearance of Kaliningrad Cathedral was registered as s trademark. It means that GUK ‘Kafedralniy Sobor’ has to earn 0,5% of income from any commercial business that deals with use of the cathedral image, fir example, from sale of postcards or any other goods with its image (including cigarette packs ‘Sobornye’ and vodka ‘Vostochno-prusskaya’). Director of GUK ‘Kafedralniy Sobor’ claims that all earned funds will be used for restoration of the cathedral.


Firm Apple is the most expensive trademark of the world. In 2011 its price increased for 84% and reached 153,3 billion dollars. On the second place goes Goggle which price decreased a little previous year (at the moment it costs 111 billion). IBM, founding father, stays at the third place with 100,85$ price. The next place is occupied by Ronald Macdonald. The great five is crowned with Microsoft (78,24 billion dollars). We should also mention Facebook that is on the 35 place (19,1 billion dollars) with its enormous increase for 246%.

In the great ten there are also McDonald’s, Coca-Cola, Marlboro and others. Russian companies are presented in the great hundred – MTS and Sberbank. MTS price has increased for 12% recently according to Millward Brown Optimor.


Trademark history goes through centuries and it is impossible to fix the data of the first one.

Beginning from 5000 B.C. mass production of utensils marked with the emperor name, manufacturer name and production place began.

Hellenistic author Horapollo wrote his ‘Hieroglyphica’ in the 5th century A.D. and it was published in the 15th century. He considered hieroglyph not as elements of Egyptian language but as ideograms that passed ideas. Some of Horapollo hieroglyphs (such as Phoenix) became emblems.

Symbolism and emblematic had a fantastic development in medieval Europe. Military emblems took a lot of splendor inn the 15th century as numerous mottos decorated hats, camisoles, armor and harness.

The official marking of gold and silver in England began in 1300 when Edward I introduced the law that obligated jewelers to sell their jewel only in condition of its marking. Fraudsters were sentenced to death.

Merchant signs are a very interesting phenomena. They were personal marks that were used by merchants in Europe from the 13th to the 16th centuries. They can be considered as predecessors of modern trademarks because they indicated merchant name and guaranteed a appropriate quality. Printer signs appeared in the 15th century (marks in books that identified its printer). For example, double shield of Johannes Gutenberg that appeared in books published in 1462.

By the 16th century emblems decorated both castles of aristocrats and taverns. Moreover, they were widely used in trade.


The first statute concerning trademarks were adopted in 1266 be English Parliament under the rule of Henri III. Under this statute each baker had to mark his bread.

On the 13th of August 1875 the first Act of Trademark Registration was adopted. It granted to the owner of a registered trademark exclusive rights to use it and, what is more, to bring actions in case of any infringement. Administration of trademark registration was created in London on the 1st of January 1876. The first trademark to be registered was a red triangular of “Bass and Co.” by which ale bottles were marked.

Though Bass and Co. trademark is the oldest one, it is not the first of existing trademarks. In USA trademark registration began 5 years earlier than in England under the Act 1870. The first applicant was ‘Avril Chemical Paint Company’ with its symbol of eagle holding a pot with paint in its beak and a pennant with motto ‘Economically, Beautifully, Firmly”. But the Act 1870 was found unconstitutional and invalid and, as a result, the first registration was invalid. A new act was adopted in 1881. From 1905 USA Patent Agency has been registering all trademarks.


Trademark ‘Pepsi Cola’ was registered in 1898 and its logotype changed regarding fashion of different periods. In 1905, 1908 and 1940 some modifications concerning its print were made. In 1950 the image of cover with logotype appeared and since then this cover changed until 1996 when there was only a circle left that was remade into a children ball. Perhaps, creators try to use people’s attachment to childhood memories and provoke subconscious interest.


It is thought that the first Patent Act was adopted in Venice in 1474, while the first patent was granted even earlier on the 3rd of April in 1449. It was took out by Fleming John Yutman to obtain an exclusive right of manufacturing stained glass for 20 years. Venetian glass is still valued and craftsmen keep their production skills in secret passing it from one generation to another but they do not take out patents because otherwise they would have to uncover their secrets and make it public in 20 years.

The first Patent Act in the USA was adopted in 1970. The first patents were signed by the President himself – George Washington. Some time later Abraham Lincoln said that ‘patents had added fuel in the fire of genius’. He was absolutely right because nowadays the USA is the most creative state judging by the quantity of patents.


Sources of information:

http://www.factroom.ru/
http://sobor-kaliningrad.ru/
http://globalist.org.ua/
http://biblio.narod.ru/
http://www.brainera.lt/

Utility Model Registration

A utility model is a technical improvement of already existing or again created mechanism or device, a new embodiment of idea which allows to solve a certain problem in any area of engineering. Here are examples of utility models: mobile car washes, arms or computers in military execution.

A utility model can be registered quicker, than an invention because an examination in essence is not required. To register an utility model there should be compliance only of two conditions: novelty and industrial applicability.

Any person which is not a right-holder can use a utility model only with the permission of her owner.

A registration application of a utility model is submitted to the Federal Institute of Industrial Property (FIIP). It is useless to try to register improvements concerning only appearance of a product or contradicting the principles of humanity and morals as a utility model.

A patent is granted for a utility model and its validity period is 10 years in the Russian Federation, on condition of annual fee payment. "Card Patent" will remind you of it.

"Card Patent" will examine a novelty and industrial applicability of a utility model. Our experts will help to draw papers for registration of a utility model in compliance with law requirements.

Registration of a utility model can be carried out on one of options:

  • in the territory of the Russian Federation;
  • in the participating countries of the Paris Convention http://www.wipo.int
  • in the territory of the certain state.

  • Object description (drawings)
  • Full name of the applicant, PSRN
  • Full legal address
  • Phone, fax, e-mail address
  • Bank details
  • Organization Russian National Classifier of Businesses and Organizations code
  • Director (position, First name, middle initial, last name)
  • Power of attorney

Useful models are protected in the majority of Romano's states - the German legal family and in some states of the continental right (the USA and the Great Britain legislation does not protect useful models). As well as in Russia all over the world there are less strict demands to useful models because lack of evidence (inventive level, an inventive step) is not required. In Hungary, Germany and Spain useful models have to relatively, but not absolutely novel (that is the author's privilege on novelty is provided). In rare cases, not only a the device, nut a method can be protected as a useful model (in Ukraine, Austria, Estonia, France, Ireland, Portugal). The standard period of validity of the patent for useful model is 10 years.

In the majority of the states, including Russia, the coexistence of the national patent for the invention and the patent for useful model is not allowed (the exceptions are Germany and Ukraine).


An inventor going to patent his invention often asks himself if he should patent it as an invention or as an useful model. To answer this question one should look at the problem from different point. Firstly, the object of the invention can limit a type of the patent document which can be received. Secondly, the patenting purposes also matter. Besides, qualities of patents can matter. Let's have a look on both types of security documents more closely.

A patent for an invention is the most known security document in the field of intellectual property. In the Russian Federation a patent for an invention protects a patented device, a method or a structure within 20 years that is considerable validity period. To be patentable an invention has to conform to rather serious requirements of patentability and it happens to be sometimes in spite of the fact that development can provide advantages with minor design changes. For such cases exactly a patent for a useful model has been invented. In the Russian Federation it is granted only on devices and its validity period lasts 10 years. It also makes a very long period of time taking into account a possibility of extension of validity period for 3 years. It is quite easy to guess that in ten years technical industry can step far forward and it will be necessary to protect new developments.

A patent for results of development can perfectly cope with protection of the market and preservation of the rights to intellectual property for developers of the invention or a useful model. It is also necessary to understand that such protection provides possibility of carrying out further scientific researches and works which in 10 years can be carried out in several directions and on different depth. At the same time, to compensate its smaller validity period a patent for useful model has softer requirements to patented object in comparison with the patent for the invention and this fact makes it popular among applicants and patent holders.

Invention Registration

Invention is a new solution of a task in any sphere that gives a positive effect and relates to a device, substance, a microorganism strain, culture of cells of plants or animals and also to a method.

An invention has to have novelty, inventive level and has to be applicable. The most known recent inventions are touch phones, Ipad, a camera with a translucent mirror, a wireless color LCD TV, a jet satchel.

If an invention has no technical character (for example, a scientific theory or rules of a game) it cannot be registered. It is also impossible to register inventions if its use contravenes public moral and morality (such as ways of cloning people as cloning is forbidden in Russia). One cannot patent an unusable invention at least until the mankind does not reach the level of using it.

Unlike an useful model an invention has to have absolute (world) novelty and it has to be proved by the Federal Institute of Industrial Property (FIIP) while exanimating an application.

Taking out a patent needs registration of a way and/or an object. After registration right-holder takes out a Patent that certifies an invention priority, authorship and an exclusive right to the invention. Nobody except right-holder can use without his authority a patented invention. A breach of this rule is legally punished (even under criminal law).

A deep analysis of an absolute (world) novelty precedes a patent registration. Card Patent will carry out examination of an invention so that it complies with qualifying standards before filing an application to FIPS, will help to draw correctly all necessary papers, to correspond with FIPS experts and to take out a patent. Our company will help to protect rights in case of illegal use of an invention.

A patent is granted for an invention and its validity period is 20 years on condition of annual duty payment. Card Patent will remind You of it.

Card Patent will examine an invention on its compliance with qualifying standards, help to draw papers according to the law and take out a patent under one of these options:

  • On the territory of the Russian Federation
  • In the participating countries of the Paris Convention http://www.wipo.int

On the territory of a certain state.

Registration of an invention is preceded using deep analysis on the absolute (global) novelty. "Card Patent" will check an invention for compliance with the requirements before applying with FIPS, this helps properly fill the necessary documents, to correspond with expert FIPS in order to obtain a patent. We can help you defend your rights in cases of illegal use of the invention.

A patent is issued for an invention which is valid for 20 years subject to payment of the annual fee. "Card Patent" will remind you of this.

"Card Patent" will check an invention for compliance with the requirements also will compile and fill documents in accordance with the requirements of the law and will help to obtain a patent for the invention based on the following options:

  • On the territory of the Russian Federation;
  • In the member countries of the Paris Convention http://www.wipo.int;
  • Within the individual state.

  • Description of the object (drawings)
  • Full name of the applicant, BIN
  • Full legal address
  • Telephone, fax, e-mail address
  • Bank account details
  • Code of Enterprise Organization
  • Head of the enterprise
  • Power of Attorney

If one makes a list of the most known inventions of the previous centuries he may notice that there are few women among authors. It does not mean that women do not know inventing or are not creative, the thing is that they face numerous obstacles in receiving ‘credits’ for their inventions.

Let’s take, for example, Sybilla Masters who lived in American colonies. Observing work of Indian women she invented a new method of turning corn into corn flour. She went to England in order to get money for the idea but under the laws of that time it was forbidden for women to have any property including intellectual one. Such property belonged usually either to father or to husband. In 1715 patent for the invention was at last granted but under her husband’s name.

Mary Kies was the first American woman to register patent under her name. In 1809 she worked out a way to weave straw hats and it was an economic benefit for New England. Having received a paper under her name, Mary thereby gave a way to other female inventors to patent their ideas. Women did not hesitate.

In the XVIII century there was a Protestant religious sect known as Shakers. Municipal life, equality between sexes and hard work were the main values of this sect. Tabitha Babbith lived in one of its communities in Massachusetts working as a waiver. In 1810 she invented a method to facilitate work of commune members. She noticed that men saw logs using a special saw with two handles which one had to pull back and forward. Though burden was the same for both men logs were sawn only when a say moved forward but on its way back nothing happened. Babbith thought that it was energy waste and created a prototype of a circular saw that was later used in sawing industry. She invented a saw with circular edge so that each movement was useful. However, because of precepts of her community she decided not to gain money for her invention.

It is possible to suppose that dishwater was been invented by someone who spent years on washing dishes. Actually, Josephine Cochrane who took out a patent for the first dishwater did not spend a lot of time on washing. The real incentive for this invention was the fact that one day her servants broke into pieces her favorite Chinese porcelain service which she loved a lot. Cochrane was woman of the world who loved to have a good time but her husband death in 1883 left her with a huge number of debts. She decided to concentrate on invention of a machine that could wash dishes without disturbing her. Her dishwater working with stream of water gave great expectations. She managed to take out a patent in 1886. Cochrane claimed that it had been much easier to invent a dishwater than to make it popular. At first, her invention failed on a market of individual consumers because many families did not have water heating systems that were essential and those who had did not want to pay for work that women did free of charge.

Not being frightened by this failure she started meeting chefs of big restaurants and hotels telling them that one dishwater could do work instead of dozens of workers. With time, however, more and more families began to but this device.


Michael Jackson had an official patent in the USA Patent Office (patent No. 5255452) on a special invention – shoes which are attached to a scene and allow a man wearing it to bend far forward.


The first-ever patent was granted on the 3rd of April 1449 to the Italian inventor John Yutnem on manufacturing stained glass for 20 years. Venetian glass is still valued and craftsmen keep their production skills in secret passing it from one generation to another but they do not take out patents because otherwise they would have to uncover their secrets and make it public in 20 years. Perhaps this is why this is the USA and not Italy who is an absolute leader in number of annually granted patents. American inventions such as chewing gum (No. 98304), an adhesive tape, a pencil with an eraser on its end, a straw for cocktails and a mobile phone and many others are loved and demanded.


An appearance of the first patent prototype refers to 1234. A tailor who had developed an unknown earlier curve of outer clothing enjoyed an exclusive right to it during 15 years. A patent for the invention of the ship rotary crane, granted in 1421 in Florence to architect Pitti Filippo Brunchelli is considered to be the first-ever granted patent.


Though patents are granted mostly on serious inventions demanding knowledge and professional qualifications there are cases when investors are children. Blaise Pascal was 18 years old when he invented the first calculator in 1641. This mechanical could subtract and sum up. Robert Patch was just 6 years old when he invented a toy truck which could be easily folded, taken into pieces and be turned into different trucks. He took out a patent in 1963.

Sometimes an invention means a capacity something new in a well-known thing. Analogs of modern chewing gum have been know since the time of Ancient Greece and Indians who used pitch of trees for such purposes. At the beginning of the XIX century a man tried to make chewing gums of spiced paraffin. But it was impossible to develop such a production because such chewing gums melted on the sun and burst on cold. In 1869 the first patent on chewing gum was taken out in the USA (No. 98304). The inventor was dentist who proposed to use it for improvement of dental health and to make it of rubber, chalk, charcoal and fragrances. Ironically, the patent turned out to be absolutely useless because its receipt and technology were never used. But this invention provoked a lot of work in this direction. The same year a real chewing gum was invented. It was made of chicle – pitches of the Mexican tree (that is what ancient Aztecs chewed).

However, it was William Wrigley who had the biggest success. He improved technical processes and in 1892 began to produce chewing gum Wrigley’s Spearmint, a year later – Wringley’s Juicy Fruit (these types are world leaders even nowadays). He was the first to mix chewing gum with icing sugar, to include mint and fruit additives and introduced new forms of chewing gums (balls, sticks, plates). He patented them all. Commercial success of Wrigley is well-know. But it is necessary to mention that other companies work in this direction. During last 30 years more than 1000 patents have been registered in different countries and all of them are connected to chewing gums, including patents on materials, production methods, design etc.

Industrial Sample Registration

Industrial sample is a new original solution of a product defining its design and properties: its form, configuration, ornament and combination of colors. A label or a book cover are typical examples of industrial samples. It is possible to register design of a label, a non-standard form of a bottle, appearance of a dairy package, etc. The design of wine bottles with slightly inclined neck and a small dent sideways the French wine-making house of "J.P. Chenet" is known in the whole world. Appealing to esthetic tastes of consumers an industrial sample makes a product more attractive. An industrial sample is actual for products of fashion industry, industrial and domestic production.

An industrial sample is patentable (patent validity comes to 10 years on condition of payment of annual duty). Taking out the patent patent owner gets the right to dispose of an industrial sample. No person can use an industrial sample without a permission of patent holder.

But a patent is granted in all cases. FIPS will not satisfy an application for appearance and design of objects of architecture (except for small objects) and for the products made of liquid, gases, sand and other unstable materials, for the decisions concerning only technical function.

"Card Patent" will check a utility model for compliance with the requirements also will compile and fill documents in accordance with the requirements of the law and will help to obtain a patent for the invention based on the following options:

  • On the territory of the Russian Federation;
  • In the member countries of the Paris Convention http://www.wipo.int;
  • Within the individual state.

  • Description of the object (drawings)
  • Full name of the applicant, BIN
  • Full legal address
  • Telephone, fax, e-mail address
  • Bank account details
  • Code of Enterprise Organization
  • Head of the enterprise
  • Power of Attorney

In the USA industrial samples (design patent) are protected by ‘patents for design’. A product form, configuration and decorative elements of a surface are subjects to protection. The sphere practically is not limited: there are patents for design of architectural concepts, clothes, fonts and even computer badges.

A patent for design works is valid within 14 years.

In EU countries, industrial samples are protected via the mechanism of "designs of Community" (Community Designs). Design means product form, color, contours, textures, decorative elements, choice of materials. Design is legally protected if it is new and has individual character (that is if general impression from design differs from general impression from existing designs). Solutions based only on technical function of a product or mechanical connections with other products aren't protected.

Officially registered "the design of Community" is valid within 25 years.


In 1842 George Bruce from the USA took out the first patent for an industrial sample (it was a new font).

In 1879 August Bartoldi was awarded with a patent for an industrial sample of Statue of Liberty. This patent covers sale of the small copies of a statue. Income from sales helped to raise money to construct a statue in full size.


Students of the London school of design and art of a name of St. Martin Martin Lindkvist and Bryan Goulding created a revolutionary design of a wine bottle with built-in TV screen.

The innovative bottle created after a prototype of a 150-year wine bottle of Hardys firm is remarkable because of the fact that it gives all information on its content.

Thanks to the small monitor, each curious person can watch a small movie about where and how was poured the wine, what crop grapes was poured, and what flavoring qualities it possesses.

Students also took care of appropriate storage of wine. There is a small gadget on a bottle for temperature control.

Contracts Registration

Objects of intellectual property (further - objects of IP) – such as trademarks, computer programs, maps, photos, paintings, advertisement - are everywhere. The list of objects of IP (The Russian Civil Code divides them into results of intellectual activity and means of individualization) is quite extensive and provided in article 1225 of the Russian Civil code. The need of using results of intellectual activity or means of an individualization arises quite often. For example, one may need to place someone else's photo on the site, to produce a disk with a set of certain melodies, to mark a product with a trademark, to use someone's drawing as a book cover , etc. However, there is a right-holder of any object of IP and only to him an exclusive right belongs (this right gives an authority to supervise use of object of IP and to gain income from its use).

Before start enjoying any object of IP it is necessary to find out a right-holder and make a contract. Quite often a right-holder is an author himself, but sometimes it is another person (for example, an author employer).

The possibility to use a result of intellectual activity without permission may be tempting but it can entail administrative, civil and criminal liability.
By concluding a contract one can receive either all powers or a part of them. A territory and terms of use of rights may be limited in a contract. A contractual form of transmission of exclusive rights protect both assignor and assignee. A contract provides and guarantees realization and protection of property rights of a right-holder (sometimes it protects personal non-property rights of the author too).

A contract on alienation of an exclusive right and license are the most widespread ways of disposition of an exclusive right. However, there are also other contracts providing a transition of an exclusive right. For example, a contract of mortgage of exclusive rights, a contract signed on the basis of the open license, a contract of commercial concession.

The Card Patent renders services in registration of contracts.

Article 1235 of the Russian Civil Code states general rules of conclusion of a license contact. Parties to this contract are called licensor (right-holder) and licensee. By means of license contract licensor concedes or engage himself to concede to licensee the right of use of object of intellectual property (further – IP).

After concluding a contract licensee is authorized to use an object of IP within the rights and the ways provided by the contract only. Moreover, it is not necessarily to transfer the full right of use. It is possible to concede a right of use of object of IP in the certain way (for example, to print photos belonging to a licensor in a fair brochure of the licensee), to limit period of validity of an exclusive right and (or) to limit the territory of use of exclusive rights.

It is very important to mention that a right is considered transferred only provided it has been directly specified in a contract. A right-holder reserves all authorities that have not been specified in a contract. In case of a dispute arguments concerning implied conditions that have neither been signed nor business intercourse between parties will not be considered by court.

In other words, it is forbidden for licensee to do anything that has not been specified in a contract. A license contract has to be in writing and is subject to state registration. Non-compliance with written form or requirements of state registration invalid a contract.

A license contract can provide a capability to grant licenses to the third parties (or a prohibition to grant licenses). In that case a sublicense contract is made. Concluding of a sublicense contract is possible only from a written consent of a right-holder (licensor). It is important that a sublicensee can obtain only the rights that are provided by a license contract for a licensee.

Article 1234 of the Russian Civil Code states the general rules for the contract of alienation of an exclusive right. Under the contract on alienation of an exclusive right one party (right-holder) transfers or undertakes to transfer an exclusive right belonging to him in full (partial) extent to other party (purchaser).

According to the definition, the parties of the contract are called as right-holder and purchaser. A contract on alienation of an exclusive right has to be in writing. State registration is obligatory if object of intellectual property (further – IP), is also subject to the state registration. Hence, inventions, useful models, industrial samples, selection achievements, trademarks are subject to obligatory state registration. Computer programs and databases can be registered at the request of the owner. However, if in case of such registration the contract concerning the computer programs and databases becomes a subject to state registration.

Non-compliance with written form or requirements concerning state registration invalid the contract.

According to point 1 of article 432 of the Russian Civil Code essential conditions of any contract are:

  • subject of the contract;
  • action territory;
  • amount of remuneration and/or order of its payment.

A contract of commercial concession is a contract according to which one party (right-holder) undertakes to provide to other party (user) for remuneration the right to use a complex of exclusive rights belonging to the right-holder (Art. 1027 of the Russian Civil Code) in business activity of the user.

A contract of commercial concession is:

  • Consensual;
  • Paid;
  • Bilateral.

According to point 1 of article 432 of the Russian Civil Code essential conditions of any contract are:

  1. subject of the contract;
  2. action territory;
  3. amount of remuneration and/or order of its payment.

In fact, the contract of commercial concession is a result of an era of large transnational networks and recognizable trademarks. Right-holder is usually a large well-known company that provides independent small firms or merchants (users) with right to work using its trademark for remuneration. It is an opportunity for small entities not to spend money on advertising as they enter business at once under widely famous brand. It is possibility for right-holders to promote their goods or services on new territories with the minimum expenses and risks (besides, they get remuneration).

Для государственной регистрации договора, изменения или расторжения договора по соглашению сторон в федеральный орган исполнительной власти по интеллектуальной собственности представляются следующие документы:

  1. заявление о регистрации в одном экземпляре;
  2. договор или выписка из договора, содержащая его существенные условия в двух экземплярах;
  3. документ, подтверждающий уплату пошлины (http://www.rupto.ru/norm_doc/sod/post_prav/pril_pol_poshl_941.html) в установленном размере;
  4. доверенность, удостоверяющая полномочия представителя.

The term 'concession’ has Latin origins (concession means a permission, a concession). Traditionally this word meant a permission of the state to the individual (to a person or a firm, usually foreign) to exercise economic and commercial activity on its territory. Quite often it gave him a monopoly (concession on deforestation, construction of the railroads, mining, etc.). It is possible that a term ‘commercial concession’ is used in the Russian Civil Code to distinguish its meaning because in civil law it is an entity, not a state that gives a permission.

The USA is considered to be a ‘homeland’ of this contract, though its western variant is called franchising contract (from English franchise, which stands for a privilege) and the contract parties are called franchiser (right-holder) and franchisee (user).

In some cases a transfer of a right can occur without any contract. This happens automatically and a right-holder does not get any remuneration.

In particular, article 1241 of the Russian Civil Code permits such transfers:

  • In case of an universal succession. An universal succession can take place in the following cases: a) succession after death of a right-holder; b) reorganization of a legal entity.
  • In case of imposing a penalty on right-holder’s property.

In case of imposing a penalty on right-holder’s property a transfer of an exclusive right without a contract is possible because an exclusive right (being at the same time an interest) is a part of his property.

There are some special regulations of concluding license contracts on several objects of IP. For example, concluding a trademark license contract it is essential to know that the Russian Civil Code provides two essential conditions. Firstly, it is necessary to fix in the contract that quality of goods of the licensee won't be lower than quality of the licensor goods, and, secondly, it is obligatory to provide a possibility (order) for the licensor to control observance of the first condition.

A license contract can be one of the main ways to derive benefit from owning exclusive rights on objects of IP, and in some cases such a contract is the only possibility of benefiting. For example, a right-holder cannot or does not want to use a registered trademark himself and transfers him under a license. License is also profitable for a purchaser because he does not need to spend his own funds on creation of the necessary object of IP or on ordering such a creation. Moreover, a license costs less than a full transfer of rights to an object of IP.

A license is presumed to be an ordinary one unless a contract states the opposite. Though it is not necessary to use such definitions as an ordinary license’, ‘a nonexclusive license’ or their combination ‘an ordinary (nonexclusive) license)’. The essential part is a sense of a contract, namely a condition that a right-holder has or has not a right to allow any use an object of IP to the third persons in the same ways. In the first case a license is an ordinary (nonexclusive) one, on the second case it is exclusive.

The Russian Civil Code provides directly some cases when an interested person can receive a right of use an object of IP the exclusive right on which belongs to other person in a judicial order (the compulsory license). The right of use is provided on conditions which have to be specified in a judgment (Art. 1239 of the Russian Civil Code).A compulsory license can be granted on certain results of intellectual activity only, but not on means of an individualization. It is also presumed that a license in this case is ordinary (nonexclusive), i.e. the owner has a right to provide the right of use and to sign contracts with other persons.

Questions and answers:

  1. Whether it is possible to make a contract on alienation of an exclusive right if there is a signed license contract?
    • Even if there is a signed license contract, an owner has a right to make a contract on alienation of an exclusive right with the third party, i.e. to concede this right to other person. The licensee consent isn't required. In this case there will be a replacement of an owner (licensor), but all conditions of signed earlier license contract will remain. Thus the owner has to notify the licensee of a conclusion of such a contract because if the licensee wasn't notified in writing of the transition of the rights to other person, the new owner bears a risk of the caused adverse effects. For example, the licensee didn't know about change of the right-holder and didn't provide the report to the new right-holder. In this situation actions of the licensee will be declared lawful.

  2. Suppose, that a license contract has been made. Whether a licensee can make one more license contract and provide the right of use of object of IP to the third party?
    • Article 1238 of the Russian Civil Code confirms that it is possible and calls it a sublicense contract (the third party will be called a sublicensee).

  3. Since what moment the purchaser becomes right-holder of an exclusive right?
    • The exclusive right from a right-holder passes to a purchaser:
      a) at the moment of the conclusion of the contract on alienation of an exclusive right if the agreement of the parties has not provide differently (for example, there can be a concrete specified term in a contract;
      b) at the moment of state registration of the contract if the contract is subject to such registration.


  4. Suppose, there is an exclusive license under which a licensee started using object of IP. Whether a right-holder keeps the right to use the same object and in the same ways?
    • Experts in the IS domain divided on this matter into two parts. One considered that the owner could do it, others that he could not. The resolution of Plenum of the Supreme Court of the Russian Federation and Plenum of the Supreme Arbitration Court of the Russian Federation of 26.03.2009 N 5/29 "About some questions arisen in connection with introduction in action of part of the fourth Civil code of the Russian Federation" put an end to this dispute. In particular, item 14 of the resolution noted that the license contract (irrespective of a type of such contract) presumed that a right-holder preservated the right to use the object of IS. At the same time,it can be specially provided in an exclusive license contract that the owner did not keep the right.

International Registration

Trademark registration under the Madrid procedure

Such registration allows protecting the trademark by filing only one application with all countries - participants of the Madrid system, now there are 85 of them. Number of countries changes periodically. To check the number of participants visit: http://www.wipo.int. It is important that the priority date of such application is the filing date of the application in the Russian Federation. It is beneficial for the applicant that his right to the trademark in other countries occurs simultaneously with the trademark registered under Russian law.

Such registration allows protecting the trademark by filing only one application with all countries - participants of the Madrid system.

It is important that the priority date of such application is the filing date of the application in the Russian Federation. It is beneficial for the applicant that his right to the trademark in other countries occurs simultaneously with the trademark registered under Russian law.

Trademark registration in foreign countries under the national procedure

Is used to protect trademark within the territory of a single foreign state, including protection without prior registration of the trademark in the Russian Federation.

For state registration of the contract, modification or termination of the contract by mutual agreement with the Federal intellectual property authority , the following documents must be provided:

  1. The application for registration (one copy);
  2. Agreement or statement of an agreement containing the essential terms (two copies);
  3. A document confirming payment of the state fee (http://www.rupto.ru/norm_doc/sod/post_prav/pril_pol_poshl_941.html);
  4. Power of attorney certifying powers of the representative.

protection of intellectual property

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