Some questions re Intellectual Property Licence Agreement among Russian company and business from abroad of Russia
Here is another matter we touched in email correspondence with our client, which I believe might be of interest to others.
Our client wrote:
Q: I have prepared an Intellectual Property Licence Agreement for my client from UK. It is proposed that a licence will be granted to a Russian company which will be for a business venture in Socci. The Agreement is in English. The Licensee will probably get legal advice in Russia and issues relating to Russian law may arise.. And I don’t know whether a translation of the Agreement will be required.
Do you do work of this nature?
A: Yes, we can do it. First, the Agreement can be signed not sooner than after the date of the registration – this is not available yet (but should be soon). Second, it does require to be translated in to Russian – we’ll have to submit three copies of the executed bilingual agreement to Rospatent, and pay fees.
Q: Is registration a prerequisite to achieving enforceability of the IP licence in Russia?
Q: With regard to the translation, what happens if there is a discrepancy between the two versions? Can we include a provision which says that the English language version will prevail in the event of any inconsistency between the two versions?
A: You can do that, I think it will not prevent registration of the agreement in Rospatent, but as in the case of judicial
trial what court will decide, I do not know.
Q: Can we choose the jurisdiction and the applicable law?
A: Russian trademark will be only valid on the territory of the Russian Federation. What might be other jurisdictions? Legal relations connected with the Russian trademark will be governed by Russian legislation.
Filed under: registration of trade marks in Russia