How to register a commercial concession agreement in Rospatent
The commercial concession agreement is subject to mandatory state registration in Rospatent. If you enter into this particular agreement, one of the stages will be registration. Based on this, the parties need to decide who is responsible for this, who bears the registration costs. If the counterparty turns out to be unfair, one must also remember about the consequences of not registering.
Contents:
- Why register a commercial concession agreement in Rospatent
- Instructions for registering a commercial concession agreement in Rospatent
- Consequences of not registering a commercial concession agreement in Rospatent
Why register a commercial concession agreement in Rospatent
If you transfer the rights to a trademark under a franchise, then this agreement qualifies as a commercial concession. In accordance with the Civil Code of the Russian Federation, the granting of rights under a commercial concession agreement is subject to mandatory registration. The responsibility for registration is assigned to the Federal Service for Intellectual Property, Patents and Trademarks (hereinafter referred to as Rospatent).
Instructions for registering a commercial concession agreement with Rospatent
Step 1. Conclude a commercial concession agreement that contains all the essential conditions.
Step 2. Submit an application to Rospatent. The law imposes this obligation on the copyright holder (franchisor), however, the parties can change this in the contract. However, it is not a ground for refusal if
- The rule has not been changed by the agreement, but the user has contacted Rospatent;
- The responsibility is assigned to the user, and the copyright holder applied.
Step 3. Decision of Rospatent. Refusal occurs in the following cases:
- The agreement is not a commercial concession agreement, i.e. the user is not granted exclusive rights to the trademark;
- The agreement was concluded with an individual who does not carry out entrepreneurial activity, since a commercial concession agreement can only be concluded between legal entities and individual entrepreneurs;
- Absence of a condition on remuneration, even if it is contained in a separate agreement not submitted to Rospatent.
Fee for registration of a commercial concession agreement with Rospatent
The fee for consideration of the application is
- 3300 rubles upon concluding a contract, changing and terminating it,
- 11 500 - for each trademark, service mark,
- 3300 - for each patent, certificate expanding the subject of the agreement
Term of registration of a commercial concession agreement with Rospatent
After submitting all the documents, Rospatent considers the application within 45 days. He has the right to provide the parties to correct errors in the documents, indicating a deadline. After that, the application is again sent to Rospatent, which has 45 days for consideration.
Consequences of not registering a commercial concession agreement with Rospatent
If a commercial concession agreement does not have a written form, then it is invalidated.
If the agreement was not registered with Rospatent, then the granting of the right to use is considered invalid. Based on this, the franchisee (user) can apply to the court with a claim for the return of the lump-sum fee or royalties as unjust enrichment. As a result, the copyright holder will be at a disadvantage, in particular, if there is a real transfer. Therefore, it is the franchisor who is interested in registering the contract and this obligation under the law lies with him.
At the same time, the courts emphasize that registration does not affect the emergence of contractual relations between the parties under a commercial concession agreement. In this regard, if the franchisee really enjoyed the results of intellectual activity, nevertheless, he asked to return the lump-sum fee, the court will refuse him. In this situation, abuse of the right by the franchisee is obvious, and the lack of registration does not in any way affect the relationship between the parties (А65-3443 / 2020).
Thus, the registration of a commercial concession agreement is a guarantee for both parties. Registration encourages the correct drafting of the contract and the inclusion of all essential conditions, otherwise Rospatent will refuse registration. Even at the time of drawing up, you need to talk about this stage and prescribe the obligation of the party to register. If the contract is never registered, the bona fide party may find itself in a losing position and will have to prove whether there was in fact the grant of exclusive rights. If you have any questions or you need help with drafting a commercial concession agreement, please contact A4 Law Firm lawyers.
QUESTIONS?