The Intellectual Property Review: Russia
Forms of intellectual property protection
Intellectual property includes the results of intellectual activity, which can enjoy legal protection in accordance with Part IV of the Civil Code of the Russian Federation (the Civil Code). The 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.
i Protectable intellectual property items
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.
Copyright and related rights
Copyright covers scientific, literary or artistic work that is the product of creative activity regardless of the value, type or mode of expression of the work. Copyright protects both disclosed and undisclosed works. Copyright protection arises when a work is created, hence there are no registration requirements.
Exclusive rights include, inter alia:
- right of reproduction;
- right of distribution;
- right of demonstration to the public;
- right to import or export originals; and
- right to provide access to the work by any means of telecommunication (including the internet).
Moral rights include in particular:
- right of authorship;
- right to the name;
- right to preserve the integrity of the work; and
- right of publication.
The exclusive rights to the works are protected for the lifetime of the author plus 70 years.
Neighbouring rights cover the creation and use of performances, phonograms, broadcasting programmes, cable distribution organisations and databases. The owner of neighbouring rights may be the performer of phonograms, the creator of databases or the broadcaster of media.
A patentable invention is a technical solution in any sphere relating to a product (particularly a device, substance, strain of microorganism, plant or animal cell culture) or a method (the process of affecting a tangible object using tangible tools), including particular use of a product or method. An invention may be protected if it meets the necessary requirements: novelty, inventive step and industrial applicability. The duration of a patent in Russia is 20 years, with the possibility of up to a five-year patent term extension for pharmaceutical products, pesticides and agrochemicals.
A utility model is a technical solution pertaining to a device. To be patentable, a utility model must be new and capable of industrial application. Patent protection for utility models can be granted for 10 years.
An industrial design is a design solution pertaining to the appearance of an industrial or handicraft product. An industrial design is required to be new and original. Industrial designs can be protected for five years, with the possibility of up to a five-year term extension, which may be renewed so that the entire period of the life of a design patent may be up to 25 years.
According to the Civil Code, inventions and, as of June 2019, industrial designs are also subject to temporary protection during the registration process. Once the relevant patent is granted, the owner may demand payment of remuneration for the use of the invention or industrial design during the registration term.
In addition to national registration, there are two other levels at which inventions can be protected, namely internationally and regionally. At the international level, an invention can be protected by the international patent system. By filing one international application under the Patent Cooperation Treaty (PCT), applicants can protect an invention in more than 153 PCT contracting states.
Since 28 February 2018, Russia has been a party to the Hague Agreement concerning the International Registration of Industrial Designs. This enables the protection of industrial designs in Russia and many other states through a faster and less expensive procedure by filing an international application.
Alternatively, an invention can be protected regionally on the basis of a single Eurasian patent valid within the territory of the nine Member States of the Eurasian Patent Convention (EAPC). Furthermore, regional protection is now granted to industrial designs pursuant to the Protocol on the Protection of Industrial Designs to the EAPC ratified by Russia in November 2020 and effective from February 2021. These regional mechanisms make patent registration procedures more convenient and provide for an effective protection of exclusive rights within the Eurasian Economic Union (EEU).
Means of individualisation
Russian IP legislation protects, inter alia, means of individualisation (i.e., names or designations) 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.
The company name is indicated in the corporate documents of the company and this is reflected in the Unified State Register of Legal Entities. The company name is protected in Russia upon the company's registration with the tax authorities. The exclusive right of a company over its company name may not be transferred or licensed to third parties.
Legal entities may use trade names separately from their company name. Unlike the company name, the trade name is not necessarily mentioned in corporate documents or in the Unified State Register of Legal Entities. The trade name may be used to distinguish different enterprises of a legal entity. A legal entity can have only one trade name. A legal entity may not use a trade name that would create confusion with a third party's company name or trademark or that would mislead consumers. The right to use a trade name to individualise a Russian company is valid throughout Russia. The right to use a trade name is protected independently, regardless of the company name or trademarks. It may be transferred by a franchise agreement or by a contract for the lease of an enterprise.
A trademark is a designation that is used to distinguish the goods or services of companies and individual entrepreneurs. Additionally, in 2022, it is planned to introduce a mechanism for registration of trademarks in the name of individuals, including the self-employed. 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 term may be renewed indefinitely, each time for 10 years, by the rights holder filing an application during the final year of the trademark right's effective term. Well-known trademarks enjoy legal protection without time limits (a trademark may be recognised as well known in Russia if it has become widely known to Russian consumers as a result of intensive use; legal protection afforded to well-known trademarks also covers goods and services dissimilar to those for which the mark has been recognised as well known). The Russian legislation does not restrict types of designations registrable as trademarks. Any word, image, three-dimensional or other designation or their combinations in any colour or colour mix may be registered. In exceptional cases, the Federal Service for Intellectual Property (Rospatent) may even register unusual elements, such as a particular colour. However, the Civil Code provides a list of words and designations that may not be used as trademarks.
In addition, trademarks can be protected at the regional level. In November 2020, Russia ratified the Treaty on Trademarks, Service Marks and Appellations of Origin of Goods of the EEU, which introduced a regional system for the registration of trademarks and appellations of origin. The treaty allows applicants to obtain protection for means of individualisation in the entire territory of the EEU by filing a single application with a national patent and trademark office (PTO) of an EEU Member State. Under the new procedure, a PTO will formally examine an application and send it to the PTOs of other EEU Member States, which will, in their turn, conduct their independent examinations. A single Eurasian trademark will be registered only if the examination receives positive results in all five countries. The entire registration procedure is expected to take approximately eight months but may be extended if objections from third parties are received or if any other obstacles to registration arise. At the current stage, only graphic trademarks can be registered under this procedure. The treaty will enter into force once ratified by the rest of the EEU Member States, which is expected to occur in 2021.
Finally, trademarks may also be protected in Russia under the Madrid System of the International Registration of Marks.
Appellations of origin and geographical indications
The appellation of origin of goods is the name of the place where the goods come from. It may designate a country name, a city or any geographical area referring to the place of origin of the product.
An appellation of origin registered with Rospatent is protected throughout Russia. Any producer (or group of producers) acting within the geographical area designated by the appellation of origin may enjoy the right to use that name provided it has first obtained a certificate from Rospatent and, if the appellation of origin has not yet been registered, to register it.
From 27 July 2020, geographical indications are also protected in Russia and can be registered with Rospatent. The corresponding amendments to the Civil Code were signed on 26 July 2019. A geographical indication is a designation used on products that have a specific geographical origin and possess special qualities or a reputation due to that origin. At least one stage of the product manufacturing process must be conducted on the territory specified in the geographical indication.
In December 2021, the State Duma passed the Law on Russia Acceding to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications. The Law will come into force in December 2022 and Russian businesses will then have access to the international registration of geographical indications and appellations of origin through a single registration procedure with the World Intellectual Property Organization.
Other intellectual property items
Other types of intellectual property rights that enjoy specific protection are software, breeding achievements, circuit layout-designs, databases and trade secrets (know-how).
ii Legal framework
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 Treaty on Trademarks, Service Marks and Appellations of Origin of Goods of the EEU;
- the Eurasian Patent Convention and its Protocol on the Protection of Industrial Designs;
- 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);
- the Hague Agreement Concerning the International Registration of Industrial Designs; and
- the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications.
The Civil Code of the Russian Federation, specifically Part IV thereof, codifies the existing general legal rules concerning intellectual property rights; it includes an exhaustive list of intellectual property rights and the various legal methods for protecting these rights, as well as their use and enforcement.
Certain intellectual property issues are regulated by orders of Rospatent. Rospatent is subordinated to the Ministry of Economic Development and is responsible for the registration of intellectual property rights to trademarks, patents, software and databases, as well as for the registration and alienation of, and encumbrances over, these registered rights.
Resolution No. 10 on Applying Part Four of the Russian Civil Code issued in April 2019 by the Plenum of the Russian Supreme Court (Resolution No. 10) has clarified the procedure for applying the Russian intellectual property legislation in court disputes. Clarifications are traditionally based on specific court cases and relate to different issues, for example, jurisdiction over disputes on the means of individualisation, evidence in intellectual property cases. Although the Resolution does not carry the status of a statutory regulation, its provisions have a significant impact on the further development of court practice in Russia and are often crucial for the courts when taking a decision on a particular issue – the courts are already relying on the Resolution when resolving disputes.
Since the spring of 2015, 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). In 2018, the Russian Constitutional Court decided that parallel importation may be allowed if the trademark owner follows unfair practices such as price regulation or restriction of competition. An approach of this kind was also set out in the above-mentioned Resolution No. 10. In September 2020, the Federal Anti-Monopoly Service (FAS) issued a decision deeming the actions of two rights holders aimed at protecting their rights to trademarks from the unauthorised import of marked goods into Russia by third parties under parallel imports to be unfair competition. By this decision, despite the regional principle of exhaustion effective in the EEU and Russia, which requires the consent of the rights holder to imports, the FAS in practice legalised the import of goods from foreign countries without the consent of the rights holder. In August 2021, this approach was further supported by Russian courts when they dismissed two major foreign manufacturers' claims challenging injunctions by the FAS on parallel imports of car spare parts and hydraulic equipment, once again regarding a ban on import of spare parts by unauthorised importers as an act of unfair competition. However, the issue of legalisation of parallel imports is not yet resolved and the Ministry of Economic Development is currently carrying out consultations in this respect.
In August 2020, the Russian government adopted the Roadmap on the Transformation of the Business Climate in the Field of Intellectual Property that set legislative goals for the period 2020–2022, which include:
- setting up the regional system of intellectual property rights protection within the EEU;
- improving the quality and reducing the time frame for the provision of state services in the area of protection of intellectual property rights;
- simplifying the mechanisms for assigning intellectual property rights, including through electronic means; and
- clarifying the procedures for the distribution of rights over intellectual property developed under a state contract.
In 2020–2021, there were also developments in digitalisation of many sectors of the Russian economy, including in the area of intellectual property (for example, since 17 January 2021, it has been possible to issue patents for industrial property objects in electronic form). Furthermore, the Russian government has adopted certain support measures, including the introduction of experimental legal regimes in the area of digital innovation (regulatory sandboxes) and tax benefits for Russian IT companies.
Rospatent is responsible for the registration of intellectual property rights to trademarks (service marks, collective marks), appellations of origin of goods, geographical indications, inventions, utility models, industrial designs, software and 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.
The law determines that, when an intellectual property item is subject to state registration, disposal of exclusive rights thereto under an agreement and grant of the right to use the item under an agreement (licensing) are also to be registered. Consequently, grant of the use right to such items as inventions, utility models, industrial designs and trademarks should also be registered.
Foreign legal entities may only deal with Rospatent via a trademark or patent attorney registered with the authority.
i Copyright and related rights
Copyright protection arises when a work is created. There are no registration requirements.
Such copyrighted items as software (classed as works of literature by the legislation) and databases may be registered at the owner's discretion. Even so, the only registration required by the legislation for these items is the one with respect to disposal of the related rights. The granting of rights to a registered database or software is not subject to registration.
The Civil Code establishes the following patentability conditions for inventions, utility models and industrial designs.
|Novelty||Inventive step||Industrial application||Originality|
There are certain exemptions from the protection regime. 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 layout-designs cannot be protected as inventions.
Methods for cloning human beings, human genetic modification techniques and the use of human embryos for industrial and commercial purposes, and other objects 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 appears that Rospatent is becoming more receptive to applications to register inventions that, although relating to business processes, are structured in the form of patentable methods. Methods of treatment or diagnosis may be patentable methods and there are precedents for these inventions having been registered.
iii Means of individualisation
A company name is protected in Russia upon the company's registration with the tax authorities. The right to use a trade name is protected independently, regardless of the company name or trademarks. A trademark or a service mark must be registered to be protected in Russia. An appellation of origin and a geographical indication should also be registered at Rospatent.
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 layout-designs, etc.
For instance, any information (production-related, technical, economic, organisational or other) about intellectual products in the scientific and technological spheres or professional performance methods may be recognised as a trade secret (know-how) if:
- it is of commercial value by virtue of being unknown to third parties. The commercial value might consist in the cost of production being reduced, revenues increased, the market position retained, a clear system set for evaluating the number or performance of staff members and business processes formalised;
- it is not publicly accessible or is not in the public domain (or both) (for instance, it cannot be found by using internet search engines). Even so, if public information is transformed or catalogued in any specific way or if additional efforts are required for it to be obtained, such as correspondence with a counterparty, the data may also be protected as know-how – albeit derivative or obtained by using public sources but not coming directly therefrom;
- it is not included in the list of information that cannot constitute a trade secret (see detailed information above); and
- the holder of this information takes reasonable steps to ensure it is kept confidential, for example, by applying the trade secret regime.
It is currently essential for know-how protection purposes that reasonable steps are taken to ensure the know-how is kept secret (creation of passwords, actual restriction of free access thereto by third parties), while whether or not a trade secrets regime should be introduced is left at the discretion of the know-how holder. Know-how is not subject to state registration.
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 of common jurisdiction or a commercial court would be the primary venue and route for civil enforcement.
The administrative procedure provides for the possibility of the owner of intellectual property rights to submit a complaint to the FAS, law-enforcement agencies or customs depending on the type of infringement.
Criminal case 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 (arbitrazh courts).
Depending on the category of a dispute, the proceedings may take place in the commercial courts or in the courts of general jurisdiction. 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.
The Russian Intellectual Property Court (the IP Court), the only specialised commercial civil court in Russia, has been operating since 2013. As expected, this has led to an increase in professionalism and a sound legal approach with regard to judgments in this field, not only from the newly established court but also across the Russian court system as a whole.
The IP Court is part of the Russian commercial court system. It is located in Moscow. The IP Court reviews:
- as a court of first instance – challenges to regulatory and legal acts of Rospatent;
- as a court of first instance – claims for the invalidation of the registration of intellectual property rights for non-use and disputes over the ownership of intellectual property rights; and
- as a court of third instance (i.e., a second appeal or cassation) – cases concerning the infringement of intellectual property rights between legal entities or individual entrepreneurs (or both).
The cassation rulings of the IP Court can be further appealed to the Supreme Court of Russia. Other rulings are appealed against at the presidium of the IP Court.
In June 2016, a mandatory pre-trial procedure for resolving most commercial disputes was introduced through the adoption of amendments to the Russian Commercial Procedure Code.
Many court disputes have, since 11 July 2017, been excluded from the scope of the mandatory pre-trial dispute-settlement procedure. Certain types of IP disputes were not initially excluded from the procedure, but special regulatory arrangements were later adopted to address such disputes.
In respect of claims for damages or compensation for exclusive rights infringements, the compulsory requirement to send a pre-trial demand letter has been preserved in cases where the parties to the dispute are legal entities or individual entrepreneurs.
Despite the fact that sending a pre-trial demand is compulsory, filing a statement of claim is possible in the event of:
- a total or partial denial of the claims; or
- no response to the demand letter within 30 days of the date of sending the letter.
Moreover, in cases where an interested party intends to terminate the trademark of another party for non-use, it must follow a special pre-trial settlement procedure. Under this procedure, the interested party must send a proposal to the trademark owner to:
- apply for a waiver of the trademark rights; or
- enter into a contract for the alienation of these rights.
If no action is taken within two months of the date of the proposal, the interested party has a right to start legal proceedings. The time limit set for launching such legal proceedings is 30 days from the end of the two-month period.
The pre-trial procedure requirement is not applicable if 'intangible demands for the protection of exclusive rights' are made. These cover, for example, claims for the seizure and destruction of counterfeit goods, and claims to suppress actions violating the rights of the right owner or threatening the violation of such rights.
Pre-trial procedure may be beneficial for the IP owner, allowing them to decrease litigation costs, for example state fees, legal expenses and expert costs.
iii Obtaining relevant evidence of infringement and discovery
To increase the chances of success in cases involving the infringement of exclusive rights to intellectual property, collecting relevant evidence ahead of time is vital, since in Russia there is no such procedure as disclosure or discovery, as found in some other jurisdictions.
The above-mentioned Resolution No. 10 has clarified that the law does not establish a list of admissible evidence, on the basis of which the court decides whether there was a violation or not. Therefore, the court has the right to accept any evidence provided for by the procedural laws, including that obtained on the internet. For example, the rights holder may also produce to the court evidence of counterfeit goods being offered for sale or any other purpose found on the infringer's website. Such evidence may be issued in the form of a protocol of website inspection prepared by a notary public. Evidence consisting of printed screenshots of websites clearly showing (1) the addresses of the websites in question; (2) the time at which the screenshots were taken; and (3) whether they have been verified by the parties to the proceedings, is also admissible.
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 IP 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 out that 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 of the date of filing 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 about a month of the 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 if additional evidence is required or it is necessary 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.
The statement of claim should be filed with the court in writing or electronically and be signed by the plaintiff or the plaintiff's 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 the 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; grant of a patent in the event of several identical applications having the same priority date; issue of a patent with the names of person or persons as the authors who are not the real authors, or not specifying the persons who are the real authors.
This option may be used unfairly as a tactic at pre-trial stage; for example, an infringer, intentionally violating intellectual property rights, may upon receipt of a pre-trial cease-and-desist order use the 30-day period allowed to file an objection to have the intellectual property rights of the plaintiff in question deemed invalid via administrative proceedings, and could then use this argument to suspend a prosecution. This example shows that the obligatory pre-trial procedure may be not useful in each case of IP infringement, and it can even undermine the position of the rights holders.
In the event of a defendant having used an identical product before the disputed patent was granted, the defendant can argue that he or she 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.
The defences to trademark infringement actions may include arguments such as exhaustion of the right, use of an earlier company name or trade name and abuse of right on the owner's part. As for copyright, the defences may include non-infringement or an argument that the work has entered the public domain.
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
Ideally, the court procedure takes no more than four months from the date when the statement of claim is filed, until a decision is made; however, in practice, the process is likely to be much longer, from six months to one year.
Russian legislation provides for civil, administrative and criminal liability for the infringement of intellectual property rights. The sanctions depend on the quantity of the counterfeit goods involved and on whether the individuals or legal entities involved are repeat offenders.
The civil law route entitles the trademark owner to file a claim in court for:
- termination of the infringement;
- seizure or destruction of the counterfeit goods (or removal of counterfeit signs or labels);
- publication of the infringement judgment; and
- payment of compensatory damages or statutory liquidated damages (in an amount of 10,000 to 5 million roubles, or double the value of either the infringing goods or the right to use the infringed trademark under regular market conditions).
When claiming compensation, a rights holder has to substantiate the amount of the requested compensation by submitting relevant evidence and calculations in court. In cases of subsequent infringements of an exclusive right by several infringers, each of them bears a separate responsibility. If the infringement has been done jointly, the infringers are jointly liable.
In the case of subsequent infringements of an exclusive right by several infringers, each of them bears a separate responsibility. If the infringement has been done jointly, the infringers are jointly liable.
The trademark infringer is administratively liable if the damage caused by the infringement is less than 250,000 roubles.
The most serious sanctions apply to legal entities that produce or sell counterfeit goods. The fine that may be imposed in this case would be five times the value of the counterfeit goods seized, and in any event not less than 100,000 roubles. The counterfeit goods will also be confiscated.
If the damage caused by the infringement reaches or exceeds 250,000 roubles or if the offender repeats the offence, he or she may be held criminally liable.
The unlawful use, disclosure or appropriation of an invention or patent that has caused significant damage to the author will result in a fine of up to 200,000 roubles or equal to the offender's income for 18 months, or imprisonment for up to two years. Similar sanctions apply to infringement of copyright and to the sale of counterfeit goods.
When the offender is a legal entity, criminal sanctions will be applied against the entity's officials, as legal entities cannot be held criminally liable under Russian law.
Russian law also allows the parties to apply for the injunction, including a preliminary one. The injunction may be applied at any stage of the court proceeding, including up to 15 days before filing the statements of claim if the enforcement of the judgment may otherwise become problematic or impossible.
Injunction may be ordered in the form of the prohibition of certain acts, seizure of counterfeit products or equipment used for producing illegal products.
Practically, Russian courts are often reluctant to impose preliminary injunction measures in intellectual property disputes, other than seizing fake products, blocking transfer of infringing domain names or blocking of 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.
x Appellate review
As mentioned above, the proper venue for the appellate proceeding depends on the nature of a dispute.
For instance, decisions of the Chambers for Patent Disputes related to the patentability of inventions, utility models or industrial designs are appealed with the IP Court within three months.
Decisions made by the IP Court in the first instance may be reviewed in cassation (appeal order) by the presidium of the IP Court.
Decisions made by state commercial courts and by the courts of general jurisdiction are reviewed in appeal order by the superior court. Appellate decisions can further be appealed under cassation (second appeal) and supervisory procedure.
Appellate instance considers the case on the basis of evidence submitted during the first instance. New evidence may be accepted, if a party is able to prove that it was unable to disclose them in the first instance proceeding. Appellate court reviews whether the law has been correctly applied and evidence is properly assessed.
xi Alternatives to litigation
Alternative dispute resolution procedures are admissible 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 arbitration. Despite the fact that alternative methods of resolving disputes have advantages, such as preserving the confidentiality of the information involved, in practice these methods are not used frequently by IP owners in Russia.
Trends and outlook
Intellectual property protection in its modern sense is considered to be quite young in Russia, although most global tendencies are reflected in Russian laws and practices. Some regulation is still changing, which leads to new amendments, improvement proposals and legal discussions. Much attention is being paid to the setting up regional mechanisms of intellectual property rights protection within the EEU and harmonisation of national legislation to this end. 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 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 at CMS Russia.