TRANSFER OF RIGHTS TO A TRADEMARK
When the rightholder of a trademark (mark for goods and services) does not use it in his activities, he may transfer the rights in full or in part to any other natural or legal person.
In this case, an agreement on the transfer of rights (if the rights are transferred in full) or a license agreement (if the right to use is granted) is drawn up between the right holder and the assignee.
The transfer agreement is an agreement, after registration of which, all rights transfer from the copyright holder to the assignee.
The transfer of rights agreement requires mandatory registration with the State Intellectual Property Service.
A license agreement is an agreement according to which the right holder grants the assignee the right to use its trademark (the sign for goods and services).
Such a contract does not require mandatory registration with the State Intellectual Property Service.
The cost of state duty for the publication of information on the transfer of rights to a sign for goods and services in full - 600.00 UAH
The cost of state duty for the publication of information about the issuance of a license to use the mark for goods and services - 400.00 UAH
For more information on the cost and terms of drawing up and registering the contract of transfer of rights and the license contract you can find in the "Tariffs" section.
Depending on the scope of rights transferred under the current Civil Code of Ukraine, licenses are distinguished:
An exclusive license is issued only to one person and excludes the possibility for the licensor to use the object of intellectual property rights in the field, which is subject to this license;
A single license is also issued only to one licensee and excludes the possibility for the licensor to issue licenses to other persons to use an intellectual property right in an area that is limited to this license, but does not exclude the licensor's use of this object in this area;
A non-exclusive license does not preclude the use by the licensor of an object of intellectual property rights and the issuance of a license to other persons to use this object in this area.
Under a license agreement, payment of a certain monetary reward to the licensor is always provided.
The main types of royalties are:
lump sum payment;
Article 1113 of the Civil Code of Ukraine. Agreement on the transfer of exclusive intellectual property rights.
1. Under an agreement on the transfer of exclusive intellectual property rights, one party (a person who has exclusive property rights) transfers these rights to the second party, in part or in full, in accordance with the law and on terms and conditions specified by the agreement.
2. The conclusion of an agreement on the transfer of exclusive intellectual property rights does not affect licensing agreements that were previously concluded.
3. The terms of the agreement on the transfer of exclusive intellectual property rights worsening the position of the creator of the respective object or his heirs compared to the provision provided for by this Code and other law, and also limit the creator’s right to create other objects are void.
Article 1114 of the Civil Code of Ukraine. State registration of treaties on the disposition of intellectual property rights
1. A license to use an object of intellectual property rights and contracts defined in Articles 1109, 1112 and 1113 of this Code are not subject to mandatory state registration.
Their state registration is carried out at the request of the licensor or licensee in the manner prescribed by law.
The lack of state registration does not affect the operation of rights granted under a license or other agreement, and other rights to the respective intellectual property right, in particular the right of the licensee to go to court to protect his right.
2. The fact of transfer of exclusive intellectual property rights, which in accordance with this Code or another law are valid after their state registration, shall be subject to state registration.
We will professionally prepare a transfer agreement and a license agreement and register it with the State Intellectual Property Service as soon as possible.
When drawing up the contract we approach individually