Exclusive Licensee as a Subject of Protection of Trademark Rights

The right to protect a trademark is traditionally associated with its right holder, i.e., the person in whose name the corresponding designation is registered. At the same time, the right holder may provide another person with the opportunity to use the trademark under the terms of an exclusive license. In this case, the exclusive licensee receives not only the right to use the designation within the limits established by the contract, but also an independent interest in preventing the illegal use of the designation by third parties.

Infringement of the right to a trademark can cause direct property losses to the exclusive licensee. The appearance of counterfeit goods on the market, the use of similar designations by competitors and the placement of a trademark in advertising or on the Internet can lead to a decrease in sales, confusion of goods and loss of consumer confidence. In this regard, the legislation provides the exclusive licensee with the opportunity to independently protect the right granted to him.

Exclusive licensee status

According to Article 1489 of the Civil Code of the Russian Federation (hereinafter referred to as the Civil Code of the Russian Federation), under a license agreement, one party - the owner of the exclusive right to a trademark (the licensor) grants or undertakes to grant the other party (the licensee) the right to use the trademark within the limits specified in the agreement, with or without specifying the territory where the use is allowed, in relation to all or part of the goods for which the trademark is registered.

A license can be simple (non-exclusive) or exclusive. With a simple license, the right holder retains the right to issue licenses to other persons. An exclusive license, on the contrary, assumes that within the limits of the granted right, the licensor is not entitled to issue licenses to other persons.

At the same time, the exclusive licensee does not become the right holder of the trademark. The exclusive right continues to belong to the licensor, and the licensee receives a derivative and contractual right to use the designation. However, the special nature of the exclusive license gives the licensee the opportunity to independently protect the right granted to him from violations by third parties.

Self-defense conditions

The right of the exclusive licensee to independent protection is provided for by Article 1254 of the Civil Code of the Russian Federation: if the violation by third parties of the exclusive right to the result of intellectual activity or means of individualization, for the use of which an exclusive license has been issued, affects the licensee's rights obtained by him on the basis of a license agreement, the licensee may, along with other means of protection, protect his rights in the ways provided for by Articles 1250, 1252 and 1252.1 of this Code. In this case, two mandatory conditions must be met.

Firstly, the license must be exclusive. A licensee using a trademark on the basis of a simple (non-exclusive) license is not vested with an independent right to file claims against the infringer under Article 1254 of the Civil Code of the Russian Federation.

Secondly, the infringement must affect the rights actually granted to the exclusive licensee. The limits of his ability to apply for protection are determined by the content of the license agreement, namely the list of goods and services, the territory, the term of the license, and the permitted ways of using the trademark.

For example, if an exclusive license is granted only in respect of a certain category of goods, the licensee must confirm that the disputed designation was used specifically in relation to these or similar goods. If the right granted is limited to a certain territory, the infringement must affect the interests of the licensee within that territory.

Consequently, the exclusive licensee does not protect the exclusive right to the trademark in full, but its own right to use the designation within the limits established by the license agreement.

The importance of state registration of a license

In accordance with Clause 2 of Article 1232 of the Civil Code of the Russian Federation, in cases where the result of intellectual activity or means of individualization is subject to state registration in accordance with this Code, the alienation of the exclusive right to such result or to such means under a contract, the pledge of this right and the granting of the right to use such result or such means under a contract, as well as the transfer of the exclusive right to such result or to such means without a contract, are also subject to state registration, the procedure and conditions of which are established by the Government of the Russian Federation.

In this regard, for the exclusive licensee to have the right to independent protection, it is not enough just to sign a license agreement. The grant of an exclusive license must be registered in accordance with the established procedure. Otherwise, until the relevant information is entered into the state register, the licensee cannot refer to the agreement as a confirmation of the grant of the right to use the trademark.

When applying to the court, the licensee must confirm not only the existence of the contract, but also the state registration of the granting of the right. Moreover, the submitted documents must clearly indicate the limits of the license, namely, the trademark, the list of goods and services, the territory, term, and nature of the granted right.

Ways to protect an exclusive licensee

The exclusive licensee may use the means of protection provided for by civil legislation to the extent that they are applicable to the violation of the right granted to him.

In particular, he has the right to demand: to stop the illegal use of the trademark or a designation confusingly similar to it; to withdraw from circulation and destroy counterfeit goods, labels and packaging; to remove the trademark or similar designation from goods, documentation, advertising and other materials; to compensate for the losses caused; to pay compensation instead of compensation for losses; to publish a court decision on the infringement committed.

One of the most popular methods of protection is the recovery of compensation, since it is not required to prove the exact amount of losses caused. Nevertheless, the licensee must prove the very fact of violation and confirm that he has the right to defend.

In accordance with Article 1515 of the Civil Code of the Russian Federation, compensation for the illegal use of a trademark may be recovered in the amount determined by the court within the limits established by law (from 10,000 to 10,000,000 rubles), in the amount of twice the value of the counterfeit goods or in the double amount of the cost of the right to use the trademark, determined on the basis of the price that, under comparable circumstances, is usually charged for the lawful use of the trademark in the way used by the infringer. A specific method of calculation is chosen when filing a claim, and the amount of compensation is determined taking into account the nature of the violation, its duration, the degree of guilt of the infringer, and other circumstances of the case.

In the event that a dispute between legal entities or individual entrepreneurs is related to the recovery of compensation or losses, it is necessary to comply with the mandatory claim procedure before applying to the arbitration court. Therefore, the exclusive licensee should first send a request to the infringer to stop the illegal use of the trademark and pay the claimed amount of compensation.

Participation in the protection of the right holder and licensee

The granting of an exclusive license does not deprive the right holder of the right to protect his exclusive right. In this regard, the same violation may affect the interests of both the right holder and the exclusive licensee.

From January 4, 2026, Article 1254 of the Civil Code of the Russian Federation expressly provides that if the right holder and the exclusive licensee have applied to the same infringer with claims for compensation for the same violation, their claims are solidary.

This means that the right holder and the licensee cannot independently receive compensation from the infringer in full for one violation. The fulfillment of the claim in favor of one of them terminates the infringer's obligation to the other in the relevant part. Such regulation is aimed at protecting the infringer from double penalty and at the same time preserves the right of both participants in licensing relations to initiate protection.

In order to avoid uncoordinated actions, it is advisable to determine in advance in the license agreement the procedure for interaction between the parties in the event of a violation. In particular, it is possible to provide for the obligation to notify each other about counterfeit products, jointly collect evidence, agree on the direction of the claim, and determine who will act as the plaintiff.

At the same time, the terms of the contract should not deprive the exclusive licensee of the right to protection, directly granted to him by law. Internal agreements between the licensor and the licensee regulate the relationship between them, but do not in themselves change the position of the licensee in relation to the violator established by law.

Subject of proof

When applying for protection, the exclusive licensee must first of all confirm that he has the proper status. For these purposes, a license agreement, documents on state registration of the grant of the right, and information on the validity of the legal protection of the trademark are submitted.

In addition, the licensee must prove that the license was exclusive and was valid at the time of the infringement; the disputed goods or services are within the scope of the license granted; the defendant's actions constitute the use of a trademark or a designation confusingly similar to it; such use was carried out without the consent of the right holder or other legal grounds; the infringement affects the rights and legitimate interests of the licensee.

Evidence of violation can be purchased samples of goods, cash receipts, photos of packaging, advertising materials, notarial protocols of site inspections, information from marketplaces, correspondence with the seller, and other documents. When collecting evidence, it is important to record not only the designation itself, but also the person who put the disputed goods into circulation or otherwise used the trademark.

The content of the license agreement is also of direct importance for future protection. Uncertainty as to the type of license, the list of goods, the territory or the term may raise doubts as to whether the licensee has the right to file claims. In this regard, the limits of the exclusive license must be formulated clearly and correspond to the information entered in the state register.

Thus, the exclusive licensee is an independent subject of protection of rights to a trademark, although the exclusive right to the designation is retained by the right holder. The basis for such protection is the violation of those rights that were granted to the licensee under a registered license agreement.

The ability to independently suppress the illegal use of a trademark is especially important for a licensee who produces and sells goods under the appropriate designation, develops a sales network and bears the costs of brand promotion. At the same time, the scope of its procedural and substantive requirements is limited by the limits of the license granted.

In this regard, the effectiveness of protection depends not only on the correct recording of the violation, but also on the content of the license agreement itself. Thus, a clear definition of the type of license, the list of goods and services, the territory, the term, the procedure for interaction with the right holder, and the distribution of the compensation received allows you to reduce the risk of disputes both with violators and between the parties to licensing relations.