Transfer of trademark book rights to contractors: contractual nuances

Transfer or license: what to choose

Transferring a trademark book to a contractor is not a creative but a legal act, and the same norms of the Russian Civil Code apply here as when developing design from scratch. The difference is that now the company acts not as a client but as a rights holder who manages an already completed result. It has three options, and the choice between them determines who will control the use of the brand and for how long.

For transferring a brandbook to a contractor, alienation is practically always disadvantageous — the company loses the right to manage its own identity. The correct tool is a licensing agreement, usually non-exclusive: it allows working with several contractors (print shop, digital agency, franchisee) simultaneously and to restrict or terminate usage at any moment. Sometimes a third option makes sense — a mixed contract, where the license is combined with a service agreement: the contractor receives the right to use the brandbook exactly in the scope necessary for completing a specific task (for example, only for packaging layout), and no more.

Essential terms: what the contract cannot be concluded without

Article 1235 of the Russian Civil Code strictly defines the minimum set of conditions for a licensing agreement. Their absence is not a formality, but a basis to recognize the contract as not concluded, and then the contractor legally acts without any rights at all, which creates a risk for them.

• Subject of the contract — a brandbook must be specifically identified: the document version, the approval date, the trademark registration number, if it is registered. The formulation 'corporate identity' without reference to a specific file or version is a typical reason for disputes: in a year, the company will have a new version of the guideline, and it will be unclear which one was transferred.
• Ways of Use — a closed list: 'placement on packaging', 'use in outdoor advertising', 'layout of POS materials'. The formulation 'in any way' is interpreted by courts as an indication of an attempt to conceal the actual alienation of rights and may lead to the requalification of the contract.
• Remuneration — for a paid contract, it is mandatory to specify the amount and the calculation procedure. A gratuitous license between commercial organizations is forbidden by default (paragraph 5.1 of Article 1235 of the Russian Civil Code), unless it is a gratuitous non-exclusive contract with a direct indication of this condition.

Territory, Term, Prohibition on Modification

A separate category of errors is vague formulations of the ways of use. If the territory is not specified in the contract, the license is considered to be valid on the entire territory of Russia — even if the contractor works only in one region. If the term is not specified, the contract is considered to be concluded for five years (paragraph 4 of Article 1235 of the Russian Civil Code), not for the term of a specific project, as is often assumed by the client.

It is necessary to specifically stipulate a prohibition on modifications—this is not automatically implied. If a company has permitted the use of a logo but not its 'adaptation for the local market,' a contractor has no right to alter proportions, color, or composition without written agreement. The same applies to transferring rights to third parties: a sub-contractor, a design studio on outsourcing from an agency—this all must be either explicitly permitted or explicitly prohibited in the contract text, not left to the discretion of the parties.

Fonts, stocks, and third-party rights within the brand book

A brand book rarely consists only of original developments — there are almost always commercial fonts with their own license and stock illustrations or photos. By handing over the brand book to a contractor, a company essentially transfers the obligation to comply with the conditions of these third-party licenses, but the font license itself does not automatically transfer.

Practical risk: a company may have a corporate license for a font for a certain number of installations or users, and a contractor installing it on their end would formally violate the font owner's terms. The contract must explicitly state: which elements of the brand book are licensed by third parties, who bears responsibility for obtaining separate rights for the use of these elements by the contractor, and what side covers the losses if a claim is raised by the font or stock agency owner. Without this condition, by default the claim will be directed at the company — the client — as the entity whose name appears on the packaging or in advertising.

Contractor's guarantees and liability

The logic here is similar to standard state contracts: if a contractor engages subcontractors or third parties to refine materials based on the brand book, they must guarantee that they acquire all exclusive rights to the results and transfer them to the client — this condition is explicitly provided for in model contracts of the Ministry of Construction (paragraph 11.4) and is useful to copy into a contract with any contractor who works further down the chain.

The contract must separately provide for:

1. Responsibility for using the brand book beyond permitted methods — specific liquidated damages, not the general formulation 'in accordance with legislation'.
2. Confidentiality obligation — a brand book often contains unpublished logo variants, patterns, rebranding plans, and disclosing this information to competitors should be considered a separate violation with its own sanction.
3. The client's right to unilaterally withdraw the license upon detection of violations — without this clause, terminating the contract and stopping the use of the brand book by the contractor becomes a separate court process.

Files are not rights: the main mistake when handing over a completed brand book

The most common misconception in working with franchisees and contractor chains is to assume that handing over .ai, .psd, or .fig files automatically means transferring legal rights to use them. These are two different events. Receiving the files, a contractor can physically open them and work with them, but without a signed license, they have no right to use the logo for commercial purposes, nor to register brand elements as trademarks in their own name.

This is exactly where the classic story of a court dispute is based: a company ordered a brand guideline from an agency, received the files, but did not sign a contract for the transfer of rights or a license. The agency, remaining the default owner of the rights (Art. 1288 of the Russian Civil Code), later used the developed elements for the customer's competitor — and the court ruled in favor of the agency, since formally nobody had restricted its rights.

This is especially critical for franchise systems: if a management company hands over a brandbook to dozens of franchisees, a single general contract is not enough, but a master license model with sub-licensing is required, where it is clearly stated that franchisees receive the right to use only within their own location, without the right to transfer to third parties or modify the basic constants — the logo, color palette, typography. Partial transfer of rights — 'can use, cannot modify' — must be specified in a separate clause, not implied based on the overall meaning of the contract: courts in brandbook disputes interpret ambiguous formulations not in favor of the party that drafted them.