Disposition of exclusive rights includes:
— transfer of the exclusive right in full, alienation (sale)
— granting a license for the use of intellectual property
— granting rights under a commercial concession agreement
In the event of a full sale of a trademark or patent, an exclusive rights assignment agreement is concluded. In practice, trademark assignment is often necessitated by, for example, the impending liquidation or change in business profile of the trademark owner.
A trademark assignment agreement is an agreement under which one party — the trademark owner — transfers to another party — the successor in title (a legal entity or an individual engaged in entrepreneurial activity) — the exclusive right to the trademark in respect of all or part of the goods for which it is registered.
An exclusive right assignment agreement must be concluded in written form and is subject to state registration. Failure to comply with the written form and the requirement for state registration entails the invalidity of the agreement.
One effective way to dispose of a patent or trademark is to transfer its use to third parties on a remunerated basis by concluding a license agreement. A license agreement is the most common means of transferring rights.
The practice of transferring trademarks between companies has become widespread globally. This is due to the extreme difficulty today of creating a new trademark capable of competing with already well-known marks in the market for similar goods and services. Consequently, companies tend to use older, well-established trademarks for branding and advertising new products.
A license agreement, including one for the right to use a trademark, is an agreement under which one party (the licensor) undertakes to provide the other party (the licensee) with such a factual and legal position that enables the licensee to use a specific trademark under the terms and within the limits established by the agreement, and the other party (the licensee) undertakes to pay the licensor a corresponding remuneration or provide compensation in another form.
Furthermore, the licensee may only use the means of individualization within the scope of the rights and by the methods stipulated in the license agreement. The right to use the means of individualization not explicitly stated in the license agreement is not considered granted to the licensee.
It is important to remember that these agreements are subject to mandatory state registration.
Under a commercial concession agreement (franchise agreement), one party (the right holder) undertakes to grant to another party (the user), for remuneration, the right to use in the user's business activities a complex of exclusive rights belonging to the right holder, including the right to a trademark, service mark, as well as rights to other exclusive rights objects stipulated by the agreement, in particular, a commercial designation, a trade secret (know-how).
A commercial concession agreement is comprehensive in nature.
It includes elements of a license agreement, a service agreement, a joint venture agreement, and even a sales agreement.
The essence of the obligations it generates lies precisely in the possibility of simultaneously using protectable (e.g., trademarks) and non-protectable (specifically, know-how) objects, as well as obtaining necessary services. Only this circumstance creates the corresponding advantages for the user to participate in economic circulation.