JUrISdIctIOn repOrt: rUSSIA
neW prOcedUreS FOr
reGISterInG cOntrActS
Alexandra pelikh
Pepeliaev, Goltsblat & Partners
The Administrative Rules of the Federal Service for Intellectual Property,
“ tHe LAcK OF A LeGALLY StIpULAted
Patents and Trade Marks (Rospatent) came into force on June 12, 2009.
prOcedUre FOr tHe reGIStrAtIOn OF
This Act introduces a number of amendments to the procedure for the state
registration of contracts concerning the provision of rights to intellectual
SUcH A cOntrAct GenerAted nUmerOUS
property and means of identification.
ISSUeS rAISed bY bOtH AppLIcAntS And
According to the new Rules, contracts on the alienation of exclusive
rOSpAtent expertS.”
rights; licensing agreements and sublicensing agreements on the use of
exclusive rights; franchise agreements and subfranchise agreements; and
agreements on the pledge of exclusive rights to a trademark are subject to
state registration.
The most important innovation will affect contracts on the pledge of
The Rules amend the list of documents required for the registration of
exclusive rights. The structure of this contract is new for Russian legislation
agreements. Unlike the former rules, which required the submission of
and was introduced comparatively recently. The lack of a legally stipulated
three original copies of an agreement for registration with Rospatent, now
procedure for the registration of such a contract generated numerous issues
it is sufficient to submit two copies of an agreement or a relevant extract
raised by both applicants and Rospatent experts. The Rules provide clear-
from the agreement, as well as uncertified copies of the agreement (extract)
to be kept by Rospatent.
cut clarifications in this respect and eliminate existing oddities. Only time
will tell how this procedure will actually work.
We advise our clients, however, to submit three original copies of the
agreement, one of which will be kept by Rospatent, since in the event
In addition, before the Rules came into force, the provisions on the
of a dispute, an original copy of the agreement must be submitted to
registration of amendments to contractual terms and conditions were short
the judicial or administrative authorities. If the agreement kept by one
on detail. As a result, any amendments were subject to state registration.
party or both parties is lost, Rospatent may provide the agreement or a
The Rules make it clear whether amendments require registration or not.
copy thereof. An uncertified copy will not comply with the requirements
Another material innovation concerns the cancellation of the requirement that
established for evidence.
both parties to a contract should apply for state registration of the contract.
The adopted Rules also introduced addenda to the terms and conditions for
Now, either party is entitled to apply for state registration of the contract.
the registration of contracts on the alienation of exclusive rights to trademarks.
At the same time, the Rules establish some material requirements on
One of the terms for registration that had already been included in the
the formalisation of documents. One such requirement stipulates that a
previous version of the rules stipulated that, when alienating an exclusive
document shall indicate the full name of the legal entity (no abbreviation)
right to a trademark, it is not permitted to mislead consumers with respect
as stated in constituent documents and that a foreign legal entity should
to a product or the product manufacturer. The Rules partially supplement
specify both the name and principal place of business transliterated into the list of criteria to determine whether the alienation of an exclusive right
Russian and its country code. to a trademark is misleading and, consequently, to rule out registration
thereof if such misleading takes place, as it contravenes the provision of the
The provision on the term granted to answer a request from Rospatent
Civil Code of the Russian Federation.
has also been amended. For example, the term for responding to a request
regarding the submission of additional documents or clarifications has
Consequently, the adoption of such a regulation enables the provisions of
been extended from two to three months. This innovation provides a patent
Part Four of the Russian Civil Code to be interpreted more clearly.
attorney, when registering a licensing agreement involving a foreign legal
entity, with additional time to notify the company and receive the requested
documents. The Rules also stipulate that this term may be extended by up Alexandra Pelikh is a trademark attorney and head of the IP
to three months, if an applicant files a corresponding petition, provided group at Pepeliaev, Goltsblat & Partners. She can be contacted
that there are valid reasons for the required extension. at: a.pelikh@pgplaw.ru
www.worldipreview.com World Intellectual property review September/October 2009 71
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