According to current legislation, a registered trademark gives its owner the exclusive right to:

• use of the trademark by applying it to goods or services for which it is registered, in any advertising, on the Internet, to export goods under its name; place in advertising, etc.;

• allow any entities to use the trademark (by concluding license agreements);

• prevent improper use of the trademark, including prohibiting such use.

            It often happens that in order to expand the scope of its economic activity, to increase brand recognition, the owner of a trademark needs to transfer the rights to the trademark to other persons (entities) by concluding a license agreement.

 

! A license agreement is an agreement between the parties, according to which the trademark owner (licensor) grants another person (licensee) the right to use the trademark for a fee under certain conditions.

 

This is possible by granting a license to use:

 

• exclusive rights (exclusive license) - granting permission to use the trademark in the scope and on the territory determined by the License Agreement. At the same time, the possibility of the right holder using the trademark in the area limited by this TM and issuing licenses for the use of the trademark to other persons is excluded;

 

• non-exclusive rights (non-exclusive license) - granting permission to use a trademark with the owner retaining the right to use this trademark in the area limited by this license, including the right to issue a license to other persons in this area.

           

FOR THE PREPARATION OF THE AGREEMENT, THE FOLLOWING OUTPUT INFORMATION IS NECESSARY:

- the name of the owner of the certificate and his details;

- description of the method of use;

- scope of use;

- date, term and territory of validity of the contract;

- description of limitations in TM use;

- information about who the rights are transferred to.

 

Please note that license agreements on the transfer of rights to use intellectual property objects are subject to state registration with the National Intellectual Property Authority. The registration period is 1 month.

 

If you need to safely process the transfer of rights to your intellectual property, contact the specialists of the PITTAK law company.