Russian Federation: Registration of the Assignment of Certain Intellectual Property Rights and License Agreements

In Russia, assignment and license agreements relating to certain intellectual property rights are valid only if registered with the competent state body, Rospatent. On 14 June 2003, Regulation No. 64 of 29 April 2003 of Rospatent "on the registration of agreements on the assignment of exclusive rights to inventions, utility models, industrial designs, trademarks, service marks, registered topologies of integrated circuits and rights of their use, full or partial assignment of exclusive rights to software programs and data bases" (hereafter, "Regulation No. 64") entered into force. It replaces Rospatent's regulations of 25 April 1995 on patents, of 26 September 1995 on trademarks and No. 245 of 31 December 1998 on software programs, data bases and topologies of integrated circuits. Regulation No. 64 established a single registration procedure. In addition, it introduced a registration procedure for franchise agreements.

Hereafter, "TIMS" means topologies of integrated circuits.

Agreements on the following are valid only if registered with Rospatent:

1. assignment of patented inventions, utility models, industrial designs (hereafter, "patents"),¹ registered trade- and service marks² and registered TIMS;³
2. license of patented inventions, utility models and industrial designs,⁴ registered trade- and service marks;⁵ and
3. franchise agreements.⁶

Hereafter, the term "trademark" includes service marks.

Of course, the registration requirement is limited to Russian patents, trademarks registered in Russia or protected in Russia due to an international treaty, and TIMS registered in Russia.

With the agreement of the parties, license agreements on TIMS and agreements on the assignment of rights to software programs and data bases may be registered with Rospatent.⁷

The amendment to, or termination of, an assignment or license agreement may be registered with Rospatent.⁸ Arguably, an amendment to an agreement must be registered in order to be valid if the original agreement had to be registered.

The registration procedure also applies to the assignment of rights by succession.⁹

Generally, the following documents must be filed with Rospatent to obtain a registration:

1. application letter;
2. assignment or license agreement (three originals, each with numbered pages sewed together, signed by the parties); and
3. receipt on the payment of the registration fee.

Agreements may not comprise deleted or corrected text unless confirmed by the parties' signatures. After the registration of the agreement, two originals are returned to the parties and one remains with Rospatent.¹⁰

An application may be filed by the owner of the intellectual property rights or by the assignee of a trademark or his representative.¹¹

An application and other documents filed with the application must be in Russian or translated into Russian.¹²

Rospatent examines whether the parties of the agreement and the exclusive rights assigned or licensed are sufficiently identified in the assignment or license agreement and whether terms required by the applicable legislation have been included in the assignment or license agreement.¹³ For instance, it is an essential term of a trademark license agreement and franchise agreement that the quality of the goods of the licensee must not be lower than the quality of those of the licensor and that the licensor must control the quality of the goods of the licensee.¹⁴

A sub-license agreement may be registered only if the master license agreement expressly allows the master licensee to sub-license the licensed intellectual property rights.¹⁵

After the registration of an assignment or license agreement or its amendment or termination, the following information is published in the bulletin of Rospatent:¹⁶

1. date and registration number of the registered agreement;
2. parties to the registered agreement;
3. subject of the agreement; and
4. scope of the intellectual property rights assigned or licensed.

An assignment of a trademark is not permitted if consumers could be misled regarding the goods or its manufacturer.¹⁷ The Trademark Law and the previously applicable Rospatent Regulation of 26 September 1995 on trademarks did not clarify what is deemed to mislead consumers. Regulation No. 64 stipulates that consumers may be misled, for instance, if the trademark comprises

1. the flag and similar symbols of a state or international organisation;
2. a quality certificate which the assignee of the trademark does not have; or
3. a geographical indication if the assignee of the trademark is not located in that area.

Other examples of potentially misleading assignments are:

1. the assignor keeps the trademark for similar goods;
2. the trademark to be assigned is well known;
3. the assignor keeps industrial design rights related with the trademark to be assigned;
4. the assignor keeps the right to a company name related with the trademark to be assigned.

1. Art. 10(5) of the Patent Law No. 3517-I of 23 September 1992 (last amended on 7 February 2003) (hereafter, the "Patent Law").
2. Art. 27 of the Law No. 3520-I of 23 September 1992 (last amended on 24 December 2002) "On trademarks, service marks and geographical indications" (hereafter, the "Trademark Law").
3. Art. 9(5) of the Law No. 3526-I of 23 September 1992 (last amended on 9 July 2002) "On the legal protection of the topologies of integrated micro circuits" (hereafter, the "TIMS Law").
4. Art. 13(5) Patent Law.
5. Art. 27 Trademark Law.
6. Art. 1028 Civil Code of Russia. The registration requirement is limited to franchise agreements comprising a license of a Russian patent, trademark registered in Russia or protected in Russia due to an international treaty, and a TIMS registered in Russia.
7. Art. 13(5) of the Law No. 3523-I of 23 September 1992 "On the legal protection of software programs and data bases" (hereafter, the "Software Protection Law"); Art. 9(5) TIMS Law.
8. Sec. 5 Order No. 64.
9. Sec. 6 Order No. 64.
10. Sec. 18 Order No. 64.
11. Sec. 9 Order No. 64.
12. Sec. 11 and 12 Order No. 64.
13. Sec. 21, 26, 33 and 36 Order No. 64.
14. Sec. 26 and 37 Order No. 64.
15. Sec. 22, 29 and 38 Order No. 64.
16. Sec. 23, 30, 34 and 39 Order No. 64.
17. Art. 25 Trademark Law.