How can we legally use a trademark that does not belong to us?
Do you want to advertise your products under a trademark that has already been registered by someone else?
What can you do in order to acquire the right to use the trademark?
What are the steps you have to take in order to legally make use of a trademark already registered?
What are the costs to acquire the right to use the trademark and what is the estimated time?
In case you want to promote your products in the market under a specific trademark, and if the holder of the ownership right of the trademark agrees, you can sign with him one of these types of agreements: an assignment agreement or a license agreement.
Both of the agreements must be written, signed by the parties, without other formalities and they will be registered at OSIM so that they can produce their effects in front of other persons, excepting the contracting parties.
Regarding the price of these contracts, this is an aspect you will have to negotiate with the trademark’s holder. But be careful, if the assignment contract will not have the price stipulated, it will be considered free of title (donation) and it will have to be signed in front of a public notary for it to be valid.
The major difference between the assignment agreement and the license agreement involves the rights you will be acquiring after the signing of the agreement.
By signing an assignment agreement you will receive the actual ownership right of the trademark and by signing a license agreement you acquire only the right to use the trademark for limited time, in terms of the agreement.
When signing a license agreement you will have to pay attention to the following issues:
– will it be an exclusive license agreement (only you have the right to use the trademark) or a nonexclusive license agreement (the owner of the trademark can give the right to use the trademark to anyone else he pleases);
– the duration of the contract: because a trademark registered at OSIM is protected for a limited period (10 years), the holder of the ownership right of the trademark cannot give the right to use a trademark on a longer period than the one OSIM protects the trademark. Yet, the trademark owner can go through the procedure of renewal of the period that the trademark is protected and, by consequence, he can sign with you an addendum through which you can extend the initial duration of your license agreement.
The procedure of registration at OSIM of one of the agreements earlier mentioned can take between 2 and 3 months. OSIM will collect a tax of approximately 100 Euros which will be paid when you file your application.
At the same time with the tax and the signed agreement, the parties will file evidence regarding the current owner of the trademark.
That goes without saying, that if the assignment/license has a price, the current holder of the ownership right of the trademark will obtain revenue. If the Trade Registry (for example, if you acquire the ownership rights of shares in a LTD, in case the price of the selling was higher than the one specified in the Provisions of Incorporation Agreement) requires proof of the income tax payment, OSIM will not require such a document.
If you have any questions, please write me on my e-mail address.