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Author
Sergey Zuykov

Managing Partner / Patent Attorney of the Russian Federation / Eurasian Patent Attorney

05 September 2012

Information on Necessity to Register License Agreements

Russia, by Federal Law of 23.05.2009 No. 98-FZ, ratified the Singapore Treaty on the Law of Trademarks, signed on behalf of the Russian Federation in Geneva on March 26, 2007.

According to Article 19 of this treaty, Russia agrees that the lack of registration of a license:

does not affect the validity of registration of the mark, which is the subject of the license or protection of this mark.

can not be the reason to require the participation of the licensee in a court proceeding initiated by the right holder in connection with the infringement of the rights to the mark or to receive through such procedures the compensation for losses incurred as a result of the infringement of the rights to the mark that is the subject of this license.

can not be the reason to require the registration of a license as a condition to consider the licensee’s use of a mark as the use on behalf of the right holder in the course of the procedures related to the acquisition, maintenance and protection of marks.

The enumerated provisions should be considered as an indication to the circumstances, when the registration of a license agreement becomes not mandatory.

Such circumstances may include:

the use of marks by a group of companies, when the right holder is one person and the user is a different person; the agreement between them shall be concluded in a simple written form;

the use of the mark under the control of the right holder with a license agreement, concluded in a simple written form, what provides an opportunity to confirm the use of the mark in case of attacking it,

It should be noted that the law does not allow an extensive interpretation of the rules of the law, which include the provisions of the Singapore Treaty on the Law of Trademarks. In this connection, the registration of license agreements with the purpose of extracting income for granting the right to use the mark should be recognized as compulsory.

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