Expertise/Intellectual Property

Service

Licence Agreements

Under a licence agreement, the rights holder permits another person to use a trademark, patent or know-how while retaining the exclusive right; the grant of a right to a trademark or patent is subject to registration with Rospatent.

We are most often instructed by:

  • Rights holders granting a licence
  • Licensees obtaining a brand or technology
  • Groups of companies with a shared brand or technology
  • Parties to existing licence agreements

The information on this website is provided for information purposes only and does not constitute a public offer.

What the Service Includes

Timing and Fees
–timing on request
from ₽fee on request

Timing and fees are indicative and are confirmed when the engagement is agreed.

01 / Overview
Licences in business

A licence agreement makes it possible to retain the exclusive right to an asset while granting others the right to use it. Where an asset needs to be transferred in full, an assignment agreement is concluded.

The licensee obtains a ready-made brand or technology without spending money and time on creating it. An exclusive licence protects the licensee's investment: the rights holder may not grant the same rights to competitors within the same scope. Under a simple (non-exclusive) licence, the rights holder works with several licensees at the same time.

Remuneration under a licence: fixed licence payments, a percentage of revenue or a combination of the two.

For trademarks and patented subject matter, the right is deemed granted only upon state registration with Rospatent; such registration protects the licensee and evidences the transaction to partners and investors. The grant of a right to know-how does not require state registration.

Within a group of companies, the brand and technologies are held by one company and the others use them under licence; the consequences, including tax consequences, are considered separately.

Rights to computer programs and access to online services are documented under the IT practice's “Licence Agreements and Service Access” service.

02 / Outcome
Service Outcome
  • Opinion on rightsInformation on the rights holder, the scope of protection, licences previously granted and encumbrances.
  • Licence agreementA version setting out the methods of use, term, territory, remuneration and the procedure for overseeing the licensee.
  • Rospatent registration materialsAn application to register the grant of the right and responses to queries.

The outcome of the service is the work performed within the scope agreed with the client.

03 / Preparation
What the work is built on

  1. Materials

    The work is built on the documents and information about the transaction; the following points are relevant.

    • Subject matterThe trademark, patent or know-how being made available for use.
    • PartiesThe rights holder, the licensee and documents confirming authority, and participants' consents, if required.
    • Model of useWhich goods and services, in which territory and for what period.
    • RemunerationForm and procedure of payment, reporting.
    • Other party's versionThe counterparty's draft or comments, if any.

  2. Assessment

    On the basis of the materials, the risks, the possible solutions and their consequences are identified.

  3. Plan

    For the chosen option, a plan is drawn up: the sequence of steps, timing and scope of work.

04 / Projects
Selected Projects
01 / 04

Acting for the buyer

Intellectual property rights in the acquisition of an equipment and digital solutions manufacturer

Challenge

The buyer was acquiring shares in a foreign company that owned a Russian manufacturer of industrial equipment and digital solutions for equipment management and monitoring, as well as shares in a Russian legal entity. The acquisition of the foreign company was governed by English law.

What was done

The comprehensive legal due diligence of the Russian business covered intellectual property rights, as well as the corporate history, business operations, contractual relationships and other matters material to the transaction. The foreign ownership structure, title to the shares being acquired and the legal aspects of the buyer's entry into the existing corporate structure were analysed separately.

The structure and documents of the transaction were agreed. The findings on the Russian and foreign parts of the structure were reflected in the terms of the transaction and the arrangements for its closing.

Preparing for franchising

Consolidation of rights to a group's accounts, websites and materials before franchising

Challenge

A group of companies was engaged in extensive marketing, but its accounts, websites and rights to the materials created were registered in the names of different entities within the group. To set up franchises later, the rights had to be brought together in the group's management company.

What was done

It was established which group entity held each asset, and the transfer of rights to the management company was documented. The rights to the group's marketing assets were put in order and consolidated in the hands of a single entity.

Trademark dispute

Non-use dispute over a trademark that blocked registration of the client's mark

Challenge

The client needed to register a trademark to brand the services of a travel agency. Registration was blocked by another company's mark: that company used it for a cosmetics brand, but the protection of the mark also extended to a number of Nice classes the client needed.

What was done

Claims for early termination of the legal protection of the mark for non-use were prepared in respect of those classes. The claims were put to the rights holder at the pre-trial stage, and the dispute was settled without going to court.

Purchase of an interest

Review of an app developer's intellectual property rights

Challenge

The buyer was acquiring an interest in a company developing a healthy lifestyle app with a weekly audience of more than 1.5 million users worldwide. Comprehensive legal due diligence of the business being acquired was a key part of the engagement.

What was done

The company's intellectual property rights were analysed, as well as its corporate history, business operations and employment relationships. The due diligence findings were taken into account in structuring the transaction and preparing the contractual documentation.

05 / Questions
Frequently Asked Questions

An application for state registration of the grant of the right is filed with Rospatent while the agreement is in force, together with a supplementary agreement clarifying the terms, if necessary.

The other party's draft is taken as the basis: the licensor's authority, the type of licence, the methods of use and the remuneration are checked, and revised wording and a negotiating position are prepared for each clause.

An hourly rate, a fixed fee or a combined model is used; in some cases part of the fee depends on the outcome achieved. The fee is determined by the time actually spent, the complexity of the matter and the overall timeframe of the project, and is agreed before work begins.

Key Contacts
Deni Murdalov Deni Murdalov Partner, PhD (Law), LL.M. Ilya Smirnov Ilya Smirnov Partner

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Other Services in This Practice
Trademarks Protection and Disputes Brand Transactions Franchising Assignment of Exclusive Rights Computer Programs and Databases Account Disputes Domain Name Disputes Madrid System Trade Secrets and Know-How Inventions Utility Models Industrial Designs Documents and Consultations

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