I FORMS OF INTELLECTUAL PROPERTY PROTECTION
Intellectual property includes the results of intellectual activity, which can enjoy legal protection in accordance with the Fourth Part of Civil Code of the Russian Federation. e Russian Civil Code regulates copyright and neighbouring rights, the system of collective management of copyright and neighbouring rights, patentable inventions, utility models, industrial designs and means of individualisation.
There are two distinct categories of intellectual property protected in Russia. The first group includes objects of copyright and neighbouring rights, patentable inventions, industrial designs and utility models, while the second one covers means of individualisation.
Patentable inventions (technical solutions related to a product or to a process) may be protected if they meet the necessary requirements: novelty, inventive step and industrial applicability. The duration of a patent in Russia is 20 years. This may be extended for a further five years for inventions in agrochemistry or in pharma.
Russian law also protects utility models and industrial designs. Patent protection for utility models can be granted for 10 years. To be patentable, a utility model must be new and capable of industrial application.
Industrial designs relate to the appearance of a product. An industrial design is required to be new and original. Industrial designs can be protected for five years, and this can be extended for a further five years with a limitation of the entire validity up to 25 years.
In addition to national registration, the invention can be protected on the international level by filing one international application under the Patent Cooperation Treaty. Alternatively, the invention can be protected on the basis of a single Eurasian patent valid on the territory of the nine member states of the Eurasian Patent Convention including Russia.
Since 28 February 2018 Russia is a party to the Hague Agreement concerning the International Registration of Industrial Designs. This international procedural treaty allows obtaining protection of industrial design in Russia and many other states through a faster and less expensive procedure by filing an international application.
Russian IP legislation protects, inter alia, the means of individualisation, being the names or designations that are used to distinguish and identify companies, or goods or services that they offer. These are company names, trade or commercial names, trademarks and service marks, as well as appellations of origin of goods.
To be protected in Russia, a trademark or a service mark needs to be registered. The duration of a trademark protection is 10 years calculated from the filing date. This 10-year protection can be renewed an unlimited number of times. Trademarks may also be protected in Russia under the Madrid System of the International Registration of Marks.
It should also be noted that Russia is a party to a number of the most important international treaties and conventions covering different aspects of intellectual property, including:
- the Convention establishing the World Intellectual Property Organization;
- the Universal Copyright Convention;
- the Berne Convention for the Protection of Literary and Artistic Works;
- the Paris Convention for the Protection of Industrial Property;
- the Madrid Agreement on the International Registration of Marks and the Madrid Protocol;
- the Singapore Treaty on the Law of Trademarks;
- the Nice Agreement on the International Classification of Goods and Services for the Purposes of Registration of Trademarks;
- the Patent Cooperation Treaty;
- the Eurasian Patent Convention;
- the Locarno Agreement Establishing an International Classification for Industrial Designs;
- the Geneva Convention for the Protection of Producers of Phonograms against Unauthorised Duplication of their Phonograms;
- the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS); and
- the Hague Agreement Concerning the International Registration of Industrial Designs.
ii RECENT DEVELOPMENTS
The key institutions in intellectual property regulation in Russia are the Federal Service for Intellectual Property (Rospatent), which is a regulatory authority responsible for registering intellectual property, and the Russian Intellectual Property Court. The creation of the IP Court in 2013, which was the first, and remains the only specialised commercial civil court in Russia (including in the Soviet era system), was a big step towards establishing and developing practice in the application of the law and developing legal precedents. This innovation has also obviously improved professionalism and provided a sound legal basis for judgments in this area of law.
The Intellectual Property Court, as part of the Russian commercial court system, reviews as a court of first instance; regulatory and legal acts of Rospatent and considers cases on the invalidation of intellectual property and disputes over the ownership of intellectual property rights. As a court of third instance (i.e., a court of second appeal or cassation) it hears cases concerning the infringement of intellectual property rights between legal entities and individual entrepreneurs. The cassation rulings of the IP Court can be further appealed to the Supreme Court of Russia. Other rulings are appealed to the presidium of the same Intellectual Property Court.
Judging by its activity since the launch, the introduction of the Intellectual Property Court has been an important and a long-awaited development in Russian intellectual property practice. Intellectual property owners have benefited, since these (including those associated with intellectual property prosecution issues) in Russia are now reviewed by judges specialising in this area of law. Furthermore, the creation of the Intellectual Property Court has meant that courts now have a common approach to decision-making and their practices have become more uniform. It has also helped identify gaps in Russian intellectual property legislation.
Russian law has also been developed to combat piracy with the introduction of more efficient ways to block illegal content on the internet, including mirror websites, with the possibility of permanent blocking.
In addition, the online industry in Russia took a step towards self-regulation in the sphere of anti-piracy. A memorandum on cooperation for the protection of exclusive rights over digital technologies was signed by, on the other hand, Russian associations for the protection of the rights of owners and licensees, and large Russian media holdings and TV companies; and on the other, Russian search engines and large Russian platforms that host video content. This memorandum is aimed at more efficiently combating illegal content on the internet.
III OBTAINING PROTECTION
Rospatent is subordinated to the Ministry of Economic Development and it is responsible for the registration of intellectual property rights to trademarks (service marks and collective marks), appellations of the origin of goods, inventions, utility models, industrial designs, software, databases, as well as for the registration of any licence (and sub-licence), assignment contracts or pledge contracts in respect of registered intellectual property rights.
Currently discoveries, scientific theories, mathematical methods, purely aesthetic elements, rules and methods of intellectual or economic activities, computer programs and solutions that provide information only without an element of technical application cannot be patented in Russia. Furthermore, plant varieties, species of animals or biological ways of obtaining them (except for microbiological processes), the products of these techniques and circuit layouts cannot be protected as inventions.
Methods of cloning of human beings, human genetic modification techniques, the use of human embryos for industrial and commercial purposes and other objects that are contrary to morality cannot be registered. However, Rospatent is known to have registered inventions related to molecular biology, namely DNA selection methods.
As a general rule, patent applications in relation to business processes are refused; however, it is thought that Rospatent is becoming more receptive to applications to register inventions that, although structured in the form of methods, are essentially business methods. Methods of treatment or diagnosis may be patentable methods, and there are precedents of these inventions having been registered.
A number of disputes concerning the registration of intellectual property, as well as the cancellation of their legal protection, are to be settled in out-of-trial administrative procedures. The Chamber for Patent Disputes, which is a division of Rospatent, was established in 2005 as an administrative body to resolve disputes related to the protection of intellectual property. The Chamber for Patent Disputes also considers objections to the decisions of the PTO examiners. Russian customs officers can also assist in protecting intellectual property rights provided the right owners applied to have the relevant rights entered into a special Customs Intellectual Property Register. However, the powers of customs officials are limited to copyrights and trademark rights (they do not cover inventions, utility models or industrial designs).
Along with the traditional results of intellectual activities, non-traditional objects of intellectual property are also protected. These may be know-how (trade secrets), breeding achievements, circuit layouts, etc.
For instance, information with actual or potential commercial value for the manufacturer can be protected in Russia as know-how. The owner of this information must take active measures to protect its confidentiality and to ensure that the information is unknown to third parties.
Any type of computer program (including software), which may be expressed in any language and in any form, including the initial text and compiled code, is protected in the same way as the copyright to literary works. However, it should be noted that the ideas, languages and algorithms of the elements of a program are not subject to copyright protection.
IV ENFORCEMENT OF RIGHTS
i Possible venues for enforcement
There are various mechanisms in law for enforcing intellectual property rights, including administrative, civil and criminal enforcement. The best approach to defending rights would depend upon the type of the infringement, as well as upon the scope of the damage.
A civil court, either a court of general jurisdiction or a commercial court (see Section IV.ii), would be the primary venue for the civil route of enforcement.
The administrative procedure provides for the possibility of the owner of intellectual property rights submitting a complaint to the Federal Anti-Monopoly Service, law-enforcement agencies or customs depending on the type of infringement.
Criminal cases may be initiated by filing an application to law-enforcement agencies, if certain thresholds of damage are met.
ii Requirements for jurisdiction and venue
There are two systems of civil courts in Russia: the courts of general jurisdiction and state commercial courts. The general principle is that the commercial courts hear disputes in the economic sphere (normally involving legal entities or individual entrepreneurs), and all other disputes are handled by the courts of general jurisdiction (normally involving individuals). In particular, the courts of general jurisdiction hear disputes on the authorship or the protection of the rights of authors, and the commercial courts hear the majority of disputes on the protection of exclusive rights, if the IP owners are legal entities.
Depending on the nature of the dispute, the proceedings may take place in the commercial courts, with the Russian Intellectual Property Court as a cassation court, or in the courts of general jurisdiction. The judicial protection of intellectual property rights allows the court to order the infringement to cease, counterfeit goods to be seized and destroyed, and damages (or alternatively compensation) paid to the rightholder.
iii Obtaining relevant evidence of infringement and discovery
In a case involving the infringement of exclusive rights to intellectual property, collecting relevant evidence ahead of time is vital to increase the chance of success, since in Russia there is no such procedure as disclosure or discovery as in some other jurisdictions.
In addition to all the documents presented on a case-by-case basis, the owner of the rights will often want to produce to the court evidence of counterfeit goods being offered for sale or any other purpose found on the infringer's website. This protocol of the inspection is to be prepared by a notary public.
In the majority of patent infringement cases, the main evidence is the examination statement of a forensic examiner appointed by the court.
iv Trial decision-maker
As discussed, many disputes in the area of intellectual property are subject to the jurisdiction of the Russian Intellectual Property Court, where the judges are lawyers specialising in IP matters. They can also use the assistance of external technical specialists.
The court shall properly consider all evidence submitted by the parties. In patent disputes, where technical issues are crucial, a great deal of emphasis is put on the patent technical forensic examination.
v Structure of the trial
Usually a trial will begin with the acceptance of the statements of claim and the commencement of the case, resolved by a judge alone. This is sometimes preceded by a preliminary injunction procedure. Once the statements of claim have been accepted, the judge rules that the proceeding is instituted. This ruling states that the case is at the preparation for trial stage and also sets out the steps to be taken by parties participating in the case, and when they must be completed.
The defendant must normally submit a defence brief to the court and to other parties in reasonable time so that it can be reviewed before the start of the trial.
The preparation of the case for trial should be completed within two months after the date of the filing of the statements of claim with the court. As a general rule, preparation of the case for trial is completed at a preliminary hearing that is normally scheduled by the judge within a month after submission of the statements of claim.
The preliminary hearing is heard by a judge alone to consider the results of the preparatory work by the court and persons involved in the procedure, as well as to decide if the case is ready for a court hearing and if a court hearing in first instance can be appointed.
In accordance with the law, any written or other physical evidence, expert and professional advice or testimonies, audio and video records, and other documents and materials can be submitted as evidence. The parties are entitled to request and submit additional evidence, as well as to present motions to call witnesses in the trial or motions to conduct examinations at all stages of court proceedings. This allows the parties to bring additional evidence. A court hearing may be postponed to require additional evidence or to conduct an examination and hear the testimony of witnesses or third parties.
After all evidence has been provided in the court procedure, the parties hold a debate, summarising and presenting their position to the court. The court makes a decision, which can then be appealed to a court of second instance. In an ideal situation, the court procedure takes no more than four months from the date when the statement of claim is filed until a decision is made, but in practice the process is likely to be much longer.
If the plaintiff's claims contain monetary demands (e.g., a claim for damage or recovery of compensation), the law stipulates for a mandatory pre-trial procedure, requiring the prospective plaintiff to send a cease-and-desist letter attempting to amicably settle the dispute. The claim must contain clear demands, the grounds of these demands, and other information necessary to resolve the dispute. After this pre-trial settlement attempt, the dispute may be transferred to the court once 30 days from the date of the cease-and-desist letter have elapsed. This procedure is a statutory requirement in most civil cases, except for non-use cancellation proceedings in respect of trademarks and service marks, where a specific procedure is established.
Pre-trial procedures may be beneficial for the IP owner, allowing them to decrease litigations costs (e.g., state fees, legal expenses and expert costs).
The statement of claim should be filed with the court in writing or electronically and be signed by the plaintiff or his representative.
The plaintiff's position and claims against the defendant should be clearly set out and the statement should refer to the relevant laws and other regulatory legal acts. The plaintiff should set out the circumstances on which his or her claim is based and support these circumstances with evidence. As well as the value of the claim, the statement should also set out the calculation of the sum payable, information on compliance with the pre-trial procedure (if any), and information on the measures taken by the court to ensure property interests prior to the commencement of the action.
The statement of claim may include any other information, if it is necessary for the proper and timely examination of the case. For example, a motion requesting discovery of evidence from the defendant or other persons may be included.
The plaintiff can also provide the results of non-forensic examination as evidence. Despite the fact that the findings of this examination would reflect only the opinion of one of the parties, the court hearing these cases can take into account all evidence in case. In some situations, for example, if a forensic examination is conducted by two expert organisations and their views are different, the opinion of the non-judicial examination could play a decisive role.
The plaintiff is obliged to provide other persons participating in the case with a copy of the statement of claim and the documents annexed to it. These requirements must be complied with, otherwise the court may not take action and leave the case at a standstill until the requirements of the law are satisfied.
As mentioned above, the defendant is obliged to submit a statement of defence to the court and other parties in the case, stating its objections to the claims of plaintiff. The structure of the statement of defence is similar to the plaintiff's statement, namely, it must specify clearly the defendant's position and refer to relevant evidence.
Building a successful defence is typically based on certain tactics, including defensive invalidation of a patent or cancellation of a trademark for non-use. A patent could be deemed invalid for various reasons throughout the period of its validity. Proceedings on patent infringement are normally suspended until the validity of a patent is determined, subject to some procedural exclusions.
Patent protection can generally be cancelled on the following grounds: non-compliance of a patent with the patentability criteria; omission of data from the original application to register the invention or utility model, or from the list of essential features relating to it; the grant of a patent in the case of several identical applications with the same priority date; the issue of a patent with the names of persons as the authors who are not the real authors, or not specifying the persons who are the real authors.
These tactics may be unfairly used on a pre-trial stage. For example, an infringer, who is intentionally violating intellectual property rights, after receipt of the pre-trial cease-and-desist notice, could use the 30-day period allowed to file an objection via administrative proceedings to have the intellectual property rights of the plaintiff in question deemed invalid, and then could use this argument to suspend a prosecution. Such examples show that the obligatory pre-trial procedure may be not useful in every case of IP infringement, and it can even undermine the position of rightholders.
If a defendant has used an identical product before the disputed patent was granted, the defendant can argue that he is entitled to continue to use it based upon the right of prior use.
The defendant can also provide the results of non-forensic examination. As mentioned above, patent infringement cases are rarely heard without forensic examination in Russia. As the forensic examination is normally conducted by examiners suggested by the parties and appointed by court, it is always important to persuade the judge that your candidate is most appropriate to prepare this.
In general, the strategy and the tactics of defence in patent litigation depend upon the particular aspects of each case.
viii Time to first-level decision
In an ideal situation, the court procedure takes no more than four months from the date when the statement of claim is filed, until a decision is made, but in practice, the process is likely to be much longer from six months to one year.
Russian law also allows parties to apply for injunctions, including for preliminary relief. Injunctions may be applied for at any stage of the court proceedings, including up to 15 days before filing the statements of claim, if otherwise the enforcement of the judgment may become problematic or impossible.
Injunctions may be ordered in the form of the prohibition of certain acts, or the seizure of counterfeit products or equipment used for producing illegal products.
Practically, however, Russian courts are often reluctant to impose preliminary injunctions in intellectual property disputes, other than seizing fake products, blocking the transfer of infringing domain names or blocking infringing websites. In these three types of intellectual property cases, the plaintiff can reasonably rely upon a Russian court to impose interim or preliminary injunctions.
On the merits, the IP owners usually submit claims for the termination of the infringement; the seizure or destruction of the counterfeit goods (or removal of counterfeit signs or labels); and the payment of compensatory damages or statutory compensation (in an amount from 10,000 roubles to 5 million roubles (i.e., from EUR 143 to EUR 71,500), or double the value of the infringing goods or double the fees for the licence to use the infringed trademark under regular market conditions).
x Appellate review
As mentioned above, the proper venue for the appellate proceeding depends on the nature of a dispute.
For instance, the decisions of the Chamber for Patent Disputes related to the patentability of inventions, utility models or industrial designs are appealable to the Russian Intellectual Property Court within three months.
Judgments made by the Russian Intellectual Property Court in the first instance may be reviewed in cassation (appeal order) by the Presidium of the Russian Intellectual Property Court.
Judgments made by state commercial courts and by the courts of general jurisdiction are reviewed in appeal order by the superior court. Appellate rulings can further be appealed under cassation (second appeal) and supervisory procedure.
The appellate court considers the case on the basis of evidence submitted during the first instance proceedings. New evidence may be accepted, if a party is able to prove that it was unable to adduce it in the first instance proceeding. The appellate court reviews whether the law has been correctly applied and evidence is properly assessed.
xi Alternatives to litigation
Alternative dispute resolution procedures are available for IP disputes. For example, IP owners can settle a dispute through the mediation procedure. In accordance with the law, the mediation procedure is applicable on the basis of an agreement between the parties, including a reference in the contract to a document containing conditions for the settlement of the dispute with the assistance of a mediator.
In addition to mediation, IP disputes can be transferred by parties on the basis of an arbitration agreement to an arbitration. Despite the fact that the alternative methods of resolving disputes have some advantages, for example, confidentiality of the information involved, in practice these methods are not frequently used by IP owners in Russia.
V TRENDS AND OUTLOOK
Intellectual property protection in its modern sense is considered to be quite young in Russia, although most of global trends are reflected in Russian laws and practices. Some regulation is still changing, which leads to new amendments, improvement proposals and legal discussion.
The main trend in the development of legislation in the field of intellectual property today is towards optimising defence mechanisms for the protection of the intellectual property. Active development in the legislation is not only natural but also necessary in the context of the development of modern scientific technology. For example, it has become clear that protecting intellectual property on a national level is not enough. For example, the Eurasian Economic Union has established a common customs registry of intellectual property, which will help to suppress counterfeit products.
The issue of parallel importation is still being discussed. Notably, parallel importation is considered as a trademark infringement in Russia, although recent trends in the court practice and relevant legislative initiatives are controversial in this respect. For example, the Constitutional Court has decided that parallel importation may be allowed, if the trademark owner follows unfair practices, such as price regulation or the restriction of competition. Moreover, the Russian authorities have been pushing for parallel imports to be allowed, at least in relation to certain types of goods (such as pharmaceuticals, medical devices, automotive parts, cosmetics, perfumes, alcoholic beverages (except beer) and hygiene products). The issue of the legalisation of parallel imports has also been considered on the Eurasian Economic Union level. In 2017, the Eurasian Intergovernmental Council was given the right to allow parallel import of certain goods, but only provided that all the members of the Eurasian Economic Union come to an agreement, which has not happened yet.
At the legislative level, there are many ongoing discussions related to possible amendments to the legislation aiming to address the current gaps in the law and improve the protection of intellectual property with due account to new unfair practices and technology development.
The Russian legal framework in the area of intellectual property is generally in line with international standards, allowing Russian and foreign IP owners to effectively protect their intellectual property rights.
1 Anton Bankovskiy is a partner and leads the intellectual property practice and Vladislav Eltovskiy is an associate in the intellectual property practice at CMS in Moscow, Russia.