CONTRACTS
Most of the times, the written form and the signature of all contracting parties are required by the law, under the sanction of the impossibility of prooving the transfer.
The rights over trademarks can be alienated separately or within a trade fund.
As regards the assignments and the trademark licenses, these are registered in the National Trademark Registry and published in the Official Gazette for Industrial Property. These contracts become opposable to third parties as of their registration in the National Trademark Registry.
Some industrial property rights cannot be transmitted, such as the collective trademark.
Certain industrial property rights are also transmitted in case of forced proceedings against the debtor who is the holder of the trademark. In case of bankruptcy procedures, such rights can be evaluated and subjected to public auction.
TYPES OF CONTRACTS
The most frequently used types of contracts in the field of trademarks are:
TRADEMARK ASSIGNMENT
The trademark becomes an active element, which can be traded.
The rights of the trademark holder are confirmed by the trademark registration certificate. The rights over the trademark can be transferred by assignment (sale) anytime during the trademark protection period. Under certain conditions, the rights over the deposit can also be transferred. By assignment, trademarks can be alienated even independently from the transferring of the trade fund within which it is incorporated.
The assignment can be complete (for all the classes of products for which the trademark has been registered) or partial (for certain classes of products), without any territorial restrictions as regards the utilization of the trademark. The ownership over a trademark can be totally or partially alienated, for valuable consideration or free of charge.
THE LICENSE
The rights over a trademark can be transferred by license (renting), anytime during the period of trademark protection.
The right to use the trademark can be transferred by exclusive or non-exclusive license, for all or only a part of the products/services that the trademark has been registered for. The utilization right can be totally or partially transferred, for valuable consideration or free of charge.
The transfer is usually made by license and franchise contracts.
THE FRANCHISE
By franchise, the utilization right can be totally or partially transferred, for valuable consideration or free of charge.
TRANSACTIONS
If both parties wish to amiably solve the problems generated by certain situations, such as the similitude or the identity between trademarks, they can anytime conclude a transaction, by which they mutually agree to use their trademarks by modulating the interest fields or by limiting the registrations for the classes of products or services they are less interested in.
In this case, both parties shall try to assess the transacted trademark according to its purpose.
Indeed, Romania already has specialised industrial property assessors, as well as various assessment criteria, out of which the assessor shall choose the most appropriate one for the purpose of assessment in question.
