Trademark Licensing Special
Licensing enhances the value of the trademark and increases financial returns for trademark owners when properly employed in different jurisdictions. This can be challenging for trademark owners.
Following several requests from our readership, we decided to supplement the data of the country surveys with information on licensing.
A special thanks to our
contributors for participating in the compilation on trademark licensing.
The special outlines the procedures on licensing in various countries and is complemented by several articles on this topic.
Part I
Show Articles of Part II
A trademark licensee’s position in Italian & CTM practice
Edith Van den Eede, Società Italiana Brevetti, Italy 
Trademark licensing has become an important way of conducting IP business transactions, often linking small and large industries together, lowering barriers to entry into a market and greatly reducing the risks, time and costs associated with the manufacturing of products and/or providing services.
While some legal and practical aspects of Italian trademark licensing are analogous to CTM licensing practice, other aspects are insidiously different. read moreWhy is it worth recording? Registered licenses in Hungary
Máté Borbás, SBGK Patent and Law Offices, Hungary
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As a preliminary remark it is to be noted that the Hungarian Trademark Act is fairly laconic regarding the rules applicable for trademark license agreements. The respective chapter of the Trademark Act (Chapter IV - Licensing) contains a short definition only and some references to the basic contents of license agreements, where rules are, however, permissive in general, i.e. the parties may deviate therefrom with mutual consent.
Nevertheless, there are some additional "scattered" rules in other chapters of the Act that helps read moreTrademark licensing in Lithuania: legal and procedural aspects
Kristina Vilkienė, Metida Law firm of Reda Žabolienė, Lithuania
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Licensing of the trademarks becomes more and more popular measure used by the owners of trademarks in order to get benefit from their intellectual property. However there are some important legal and practical issues which shall be stressed out in order to be sure that the license agreement concluded ensures proper use of the trademark and allows to the owner of the trademark to enforce his intellectual property rights properly.
License agreement and use of the trademark:
According to our national Law on Trademarks, read moreLicensing of Austrian Trademarks – a short overview
Konrad Lenneis, BMA Brandstätter Rechtsanwälte GmbH, Austria
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Art. 14 (1) Austrian Trademark Act provides that trademarks can be licensed for all or a part of its goods and services as well as for the integrity or a part of the Austrian Federal Territory. The Austrian Trademark Act does not contain any provisions as regards the form in which license agreements have to be concluded. As a consequence, license agreements on Austrian trademarks can be concluded in writing, but also orally and conclusively. Certainly, in practice it is recommended concluding license agreements in writing. As regards the types of licenses, the Austrian trademark Act read moreRussian Civil Code Amendments and IP Registration
Yury Bondarev, Patentica LLC, Russia
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On 14th of September 2011, an official publication of a draft bill introducing large-scale changes to Russian Civil Code became available in press and on the Internet. These changes affect almost every chapter in the Code, including those in part IV, devoted to intellectual property.
Currently an official registration of an assignment is done by means of registering of a corresponding agreement or a contract; the same is true for registration of rights of usage of an IP object. Thus the parties to read more
S.B.G.& K. PATENT AND LAW OFFICES
Dr. Katalin Szamosi
Andrássy út 113.
1062 Budapest
Hungary (HU)
Tel (36-1) 461-1000
Fax (+36-1) 461-1099
mailbox@sbgk.hu
www.sbgk.huWe regularly submit national, international and community
trade mark applications, perform prior searches, provide monitoring services. We process
domain name cases before various forums and have filed many complaints with the Council of Internet Providers. We have an outstanding
litigation practice in legal disputes and law enforcement on trademarks, patents, domains and copyrights. Our Office is experienced in protection of neighbouring rights and of software work. We are active in the protection of computer program, literary, musical and commercial works, including
copyright problems on the Internet. We represent Clients from various industries on unfair competition issues, unfair manipulation of consumer's choices, cartels, abuse of dominant market position and merger control. We act in various consumer protection cases, as well as in traditional
competition law cases before the Hungarian Competition Authority.
Community law plays a significant role, providing legal resources in the field of IP law.
METIDA Law firm of Reda Zaboliene
Reda Zaboliene
Gyneju str. 16
LT-01109 Vilnius
Lithuania (LT)
Tel + 370 5 2490830
Fax + 370 5 2490833
patent@metida.lt
www.metida.euMETIDA Law firm of Reda Zaboliene provides legal services for Lithuanian and foreign clients in the field of intellectual property, corporate, commercial, real estate, contract law and in other law spheres, represents natural and legal persons in civil cases.
METIDA is a leading law firm in intellectual property. Due to longstanding experience and accumulated knowledge we provide legal help to our Lithuanian and foreign clients professionally and operatively. Influential int. publishers & organizations evaluated our practice: According to European law guide Chambers Europe 2008, METIDA is one of the best Lithuanian IP law firms. Patent attorney and attorney-at-law Reda Zaboliene is appreciated by clients because of efficiency, effectiveness and operativeness, they said.
The Office of Harmonization for the Internal Market (OHIM) marked our law firm as the representative of Lithuanian applicants with the largest number of European community patent and design applications filled.
BMA Brandstätter Rechtsanwälte GmbH
Mag. Konrad Lenneis
Wallnerstrasse 3
1010 Vienna
Austria (AT)
Tel +43 1 535 16 30
Fax +43 1 535 16 30 - 40
konrad.lenneis@bma-law.com
www.bma-law.comBMA Brandstätter Rechtsanwälte GmbH is an independent Austrian business law firm with strong international ties and a simple philosophy:
"Legal advice must be clear and comprehensible;
our clients shall profit from our services."
In order to fulfill this promise, we offer our clients:
- a team of highly qualified business lawyers
- assignment of one individual lawyer for each mandate
- counsel in all important areas of business law
- co-operation with a world-wide network of business law firms for our international clients
- services in: German, English, Russian, French, Spanish, Hungarian and Romanian
- state-of-the-art office facilities
- flexible and transparent fee arrangements
For years, lawyers working for BMA Brandstätter Rechtsanwälte GmbH have successfully advised renowned businesses, including not only global players but also small start-ups.
Patentica LLP
Olga Gribanova
Box 1125, Malaya Morskaya 15, office 5
190000 St. Petersburg
Russian Federation (RU)
Tel +7 812 3145347/+7 812 595 4051
Fax +7 812 314 4569
info@patentica.com
www.patentica.comPATENTICA LLP
Number of Attorneys: 13
Number of staff: 45
Office Location: St. Petersburg, Russian Federation
PATENTICA LLP is a young and dynamic firm specializing in IP related matters in Russia, Eurasia and CIS countries and providing its clients with a broad spectrum of services ranging from advice on strategic patent issues, searching and watching, patentability and validity searches, non-infringement and freedom-to-operate opinions, drafting and prosecution of patent, trademark and design applications, as well as patent and legal translations, invalidation proceedings, preparation and registration of licenses, representing clients in border protection before Customs, and litigation.
Established in 1997, PATENTICA has grown into a professional firm that is large enough to have a real depth of expertise and resources but still maintains a genuinely personal service to each of our clients. Our attorneys and agents have backgrounds in electrical engineering, chemistry, pharmaceuticals, mechanical engineering, microbiology, genetic engineering and other fields, and work closely with the firm's clients to ensure that they obtain maximum possible protection.
The firm is experienced in litigation and defending patent infringement claims, as well as patent maintenance including annuity reminding services and advice on other patent related legal matters. The quality of services and management system is certified by ISO 14001:2004 standard.