This country-specific Q&A provides an overview to intellectual property law in Russia.
It will cover intellectual property rights, licensing, enforcement, establishing infringement or liability, and challenges to intellectual property.
This Q&A is part of the global guide to Intellectual Property. For a full list of jurisdictional Q&As visit http://www.inhouselawyer.co.uk/index.php/practice-areas/intellectual-property/
What different types of intellectual property rights exist to protect: (a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how); (b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees); (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
Under the Russian Civil Code the intellectual property rights for industrial property are structurally divided into two subgroups: patent rights (inventions, utility models, industrial designs) and "means of individualization" of goods, works, services and enterprises of a legal entity or a person, i.e. an individual entrepreneur (company names, trademarks, appellations of origin, trade names). Some intellectual property rights, such as industrial designs, which are somewhere between inventions and trademarks are only subdivided into certain categories formally. Nevertheless they traditionally belong to patent rights in Russian law. Other rights, such as breeding achievements, although certified by a patent, are not related to patent rights in the Civil Code and stand separately. Other rights for technology, trade secrets, copyright and neighbouring rights also stand alone.
Patent rights emerge for results of intellectual activity in the scientific and technical area (inventions and utility models) and in the area of artistic design (industrial designs):
- Inventions. Inventions are technical solutions in any area related to a product or a method. Inventions are protectable by a patent providing that they are new and have an inventive step and industrial application.
- Supplementary Protection Certificates may be granted for inventions related to medication, a pesticide, or an agrochemical, the use of which requires duly granted permission. An SPC is granted if more than five years have passed between the invention patent application filing date and the date of granting such permission. In this case, the term of validity of the invention patent may be extended for a period not exceeding five years.
- Utility Models. Utility models are technical solutions related to a device. Utility models are protectable if they are new and have industrial application.
- Industrial Designs. Industrial designs are artistic and design presentations of an article, manufactured industrially or by artisans, that defines its outward appearance. Industrial designs are granted protection if their essential features are new and original.
Means of Individualization
- Company Name. A company name is the name of a commercial organization defined by its charter documents and included into the Uniform State Register of Legal Entities (an equivalent of a commercial/company register). A company name contains an indication of the organizational and legal forms and the actual name of the organization and cannot be composed solely of words referring to a type of commercial activity.
- Trademarks and Service Marks. A trademark (service mark) (including collective marks and well-known marks) must be sufficient to distinguish (individualize) goods (services) of legal entities or individual entrepreneurs. A person who is not registered as an individual entrepreneur cannot be a trademark owner. Words, figurative signs, three-dimensional signs, other signs or combinations thereof may be registered as trademarks. A trademark may be registered in any colour or colour combination.
- Appellation of Origin. An appellation of origin of goods represents or contains a name of any geographical object (a country, region, or locality) or a derivative of such a name which has become known to consumers as a result of long-standing use to designate a product originating there, the quality or characteristics of which are due exclusively or essentially to the geographic environment, including natural and human factors. The same applies to a sign which, though it does not contain the name of a geographical area, is still an indication to consumers that the goods bearing such a sign originate from the territory of a certain geographic area as set forth above.
- Trade Name. As opposed to a company name, it is not obligatory to include a trade name in the charter documents or the Uniform State Register of Legal Entities. A trade name may be used by commercial and non-commercial organizations and individual entrepreneurs to designate a trade, industrial and other enterprise (or several enterprises) belonging to them. A trade name is protected under the condition that it is sufficiently distinctive and well known within a certain territory. At the same time, an exclusive right to a trade name is terminated if the right holder does not use it continuously for one year.
Other creations, technology and proprietary interests
Copyright and Neighbouring Rights. Scientific, literary and artistic works are subject to protection by copyright. Such works include but are not limited to literary, dramatic, musical and audiovisual works, paintings, sculptures, graphic design, works of architecture, photographic works and other works.
Computer programs (including operational systems and software complexes) are protected as literary works.
Copyright extends to published and non-published works expressed in any objective form and does not require registration or observation of any formalities. Voluntarily registration is possible in respect of computer programs and databases.
Copyright does not extend to ideas, concepts, principles, methods, processes, systems, manners or the resolution of technical, organizational or other problems, inventions, facts, programming languages and to geological information on subsoil.
The neighbouring rights to copyright are intellectual rights to performances, sound recordings, broadcast or cable-transmitted radio and TV programmes (the services of broadcasting and cable services organizations), to the contents of databases, and also to scientific, literary and artistic works published for the first time after they have passed into the public domain. Neighbouring rights are recognized and effective regardless of whether the copyright in respect of such works is available and effective or not.
Right to Technology. A unified technology is a complex object that includes a combination of inventions, utility models, industrial designs, computer programs or other IP rights (protectable and non-protectable) and may serve as a technological foundation for a practical activity in the civil or military field. The exclusive right to a unified technology applies to a technology of civil, military, special, or dual purpose, created in whole or in part at the expense of the state (at federal or local level).
Breeding Achievements. The intellectual rights to breeding achievements expands to plant varieties and animal breeds registered in the State Register of Protected Breeding Achievements providing they meet the criteria of novelty, distinctness, uniformity and stability.
Topologies of Integrated Microcircuits. Legal protection is granted to topologies of integrated microcircuits that are original and unknown in this field as of the creation date (the same applies to topologies that are composed of previously known elements but the spatio-geometric layout of the entirety of such elements and links between them meets the originality requirement). A topology of integrated microcircuits is deemed original unless otherwise proven.
Trade Secrets (Know-How). A trade secret (know-how) is information about intellectual activities in the area of science and technology and about the methods of carrying out professional activities. To be eligible for protection as a trade secret such information must have real or potential commercial value due to its not being known to third persons, and not freely accessible to third persons on legal grounds. Furthermore, the holder of such information must take reasonable measures aimed at keeping it confidential, in particular by way of introducing a special commercial secrecy regime or reasonable confidentiality measures.
What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?
- Inventions. 20 years from the date of filing of an invention patent application.
- Utility Models. 10 years from the date of filing of a utility model patent application.
- Industrial Designs. 5 years from the date of filing of an industrial design patent application. This term may be repeatedly extended by 5 years but at the most by 25 years in total starting on the application filing date. Extension is granted upon filing a request with the Federal Service for Intellectual Property (“Rospatent”) and paying official fees.
Means of Individualization
- Company Name. A company name is protected for the whole period of existence of an organization starting from the date of state registration (inclusion in the Uniform State Register of Legal Entities) until it ceases to exist or changes its name.
- Trademarks and Service Marks. A registered trademark is in force for 10 years starting from the application filing date and can be prolonged as many times as desired by the proprietor upon payment of the renewal fee and filing of a renewal request with Rospatent.
- Appellation of Origin. An appellation of origin is protected for the whole period when it is possible to manufacture the goods with relevant special properties defined by the geographic area. At the same time, the effective term of a certificate of exclusive right to use an appellation of origin is 10 years from the application filing date. It is subject to renewal as many times as desired under the condition that it is confirmed that the certificate holder manufactures the goods possessing the relevant specific qualities within the boundaries of the relevant geographic area.
- Trade Name. The exclusive right to a trade name remains in force while it used for individualization of an enterprise (or several enterprises) by the proprietor. It is revoked if it not used uninterruptedly for one year.
Other creations, technology and proprietary interests
- Copyright and Neighbouring Rights. A copyright is effective for the lifetime of the author and 70 years following the death of the author (from 1 January of the year following the year in which the author dies). If a work is created by several authors, the copyright is effective for the whole lifetime of the last surviving co-author and 70 years after the death of the last surviving co-author (from 1 January of the year following the year in which the author dies).
- Neighbouring Rights:
- Right to a performance is effective for the lifetime of a performer (as well as a conductor and a director of a play) but for at least 50 years from 1 January of the year following the year in which the performance was made or brought to public notice.
- Right to a sound recording is effective for 50 years from 1 January of the year following the year in which the recording was made (or published provided that the publication is made within 50 years after the recording was made).
- Right to broadcast a radio or TV programme is effective for 50 years from 1 January of the year following the year when it was broadcast.
- Right to manufacture a database comes into effect as of the time of creation of the database and is valid for 15 years from 1 January of the year following the year the database is created (or published within the said period).
- Right of a publisher comes into effect as from the time a work is published and is valid for 25 years from 1 January of the year following the year in which a work is published.
- Right to Technology. As a complex object, a unified technology contains patents, computer programs and other IP rights, each with its respective duration.
- Breeding Achievements. The right to a breeding achievement is effective for 30 years from the date of state registration thereof (35 years for varieties of vines, decorative trees, fruit cultures and tree varieties, including their stock).
- Topologies of Integrated Microcircuits. An exclusive right to a topology of integrated microcircuits is effective for 10 years from the date of the first use thereof.
- Trade Secrets (Know-How). The right to a trade secret is effective as long as the information which is the subject of a trade secret remains confidential. The right to a trade secret expires once such information loses confidentiality.
Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?
The author of an invention, utility model or industrial design initially has the right to obtain a patent. In case of creation of an invention, utility model or industrial design by an employee in the course of the employee’s duties or a specific assignment by the employer, the exclusive right to such an invention, utility model or industrial design belongs to the employer unless it is agreed otherwise in a contract between the employee and the employer. At the same time, if an invention, utility model or industrial design is created by an employee at the expense of the employer but not in the course of the employee’s duties or a specific assignment, an exclusive right to such object belongs to the employee.
The right to an invention, utility model or industrial design created under a contract that was not aimed directly at the creation thereof, is owned by the contractor (vendor), unless otherwise envisaged by the contract.
If an industrial design is created under a contract specifically concluded for creating this design, it is owned by the customer (client) unless otherwise envisaged by the contract.
Company Name. The exclusive right to a company name belongs to the organization that is registered under this name in the Uniform State Register of Legal Entities.
Trademarks. The first owner of a trademark is the applicant of the respective trademark application. The initial applicant can transfer the right to the application to another person. In this case, this person becomes the applicant and obtains the right to receive a relevant trademark registration.
Appellation of Origin of goods. The exclusive right to use an appellation of origin of goods belongs to the applicant who is also the manufacturer of the relevant goods.
Trade Name. The exclusive right to a trade name belongs to a legal entity or an individual entrepreneur who uses the trade name.
Copyright and Neighbouring Rights. The author who creates the work is usually the first owner of the copyright. The author of the work is the person cited on the original or a copy of the work unless otherwise proven. The exclusive right to works created under a contract may belong originally to the customer if it is stipulated in the contact (although the author’s right of attribution cannot be assigned).
The first owners of neighbouring rights are the performer, the manufacturer of the sound recording, the broadcasting or cable-service organization, the manufacturer of a database or the publisher.
Right to Technology. The right to use intellectual property rights within a unified technology belongs to the person that has organized creation of the unified technology as a complex object.
Breeding Achievements. The right to obtain a patent for a breeding achievement initially belongs to its author. If an employee creates a breeding achievement in the course of the employee’s duties or a specific assignment by the employer, the exclusive right to such breeding achievement belongs to the employer unless it is agreed otherwise in a contract between the employee and the employer. At the same time, the exclusive right to a breeding achievement created by an employee at the expense of the employer but not in the course of the employee’s duties or a specific assignment, belongs to the employee.
Topologies of Integrated Microcircuits. The right to a topology of integrated microcircuits initially belongs to its author.
Trade Secrets (Know-How). The right to a trade secret belongs to the person that possesses confidential information which is protected by the trade secret. The right to a trade secret created by an employee in the course of the employee’s duties or a specific assignment is owned by the employer.
Which of the intellectual property rights described above are registered rights?
Inventions, utility models, industrial designs, breeding achievements, trademarks, appellation of origin of goods, and company names.
Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
The right to apply for registration of an invention, utility model or industrial design belongs to the inventor, or to his/her employer or successor in title. The right to apply for registration of a breeding achievement belongs to the person who discovers and develops it, or his/her employer or successor in title. For a trademark or an appellation of origin of goods, the individual entrepreneur or legal entity claiming ownership of the mark or appellation must apply. A legal entity that conducts commercial activities has the right to register its company name as intellectual property. This right to a company name arises when the state registration of the legal entity takes effect.
Applications to register patents for breeding achievements must be filed with the Russian Ministry of Agriculture. National applications to register all other intellectual property must be submitted to the Federal Service for Intellectual Property (“Rospatent”). Foreign companies must engage a patent/trademark attorney registered with Rospatent to handle the filing of patent or trademark applications. For invention patent applications, an alternative to Rospatent is to file a regional Eurasian patent application with the Eurasian Patent Office, designating Russia as one of the CIS countries where the patent will be protected.
Patents for inventions, utility models and industrial designs, as well as trademark registrations, are issued once the applications have successfully passed formal and substantive examination by Rospatent and registration fees have been paid.
How long does the registration procedure usually take?
Patent applications can take one and a half to two years, provided a request for substantive examination is filed along with a patent application. Utility model patents take less time than design patents. Breeding achievement patents take from six months to a year.
Trademark registration applications generally take about a year to process. Appellation of origin registrations take about twelve months and company name registrations take about one week.
Do third parties have the right to take part in or comment on the registration process?
There is no official “pre-grant” opposition system in Russia.
At the same time, when an application for a trademark and invention is published, any third party can submit objections to Rospatent alleging that the trademark application, if granted, would violate its prior rights or that the patent application does not meet the conditions of patentability. Although Rospatent is not required to respond to such objections, it often takes them into account when denying an application.
What (if any) steps can the applicant take if registration is refused?
Following the substantive examination, Rospatent will notify the applicant of the reasons for refusal with regard to invention patents and trademarks applications. The applicant may submit arguments and evidence to remedy the issues identified. (As to utility model and design patent applications, Rospatent will only request a submission of additional information or materials that may indirectly imply that without submission of requested documents the application might be refused.)
If the application is rejected despite the documents and arguments submitted, the applicant may appeal to the Chamber of Patent Disputes of Rospatent within seven months with regard to patents and within four months with regard to trademarks. The final decision of Rospatent can be appealed to the Intellectual Property Court within three months.
What are the current application and renewal fees for each of these intellectual property rights?
Application and registration fees for patents
Invention – The filing fee is 3300 RUB, plus 700 RUB for each claim in excess of ten. If a substantive examination is requested at the filing date, the fees are 12500 RUB for one independent claim and 9200 RUB for each additional independent claim. If a substantive examination is requested after the filing date, the fees are 4700 RUB for one independent claim, 2800 RUB for each additional independent claim in excess of one but not more than five, and 5400 RUB for each independent claim in excess of five.
Utility model – The application fee is 3900 RUB plus 700 RUB for each claim in excess of ten.
Industrial design - The application fee is 4700 RUB for one independent claim and 3200 RUB for each additional independent claim.
The registration fee for an invention, utility model, or industrial design patent is 4500 RUB.
Annual maintenance fees for patents
The annual maintenance fees for an invention or design begin on the second anniversary of the filing date and are from 1700 to 24000 RUB (increasing every year). The annual maintenance fees for a utility model begin on the first anniversary of the filing date and are from 800 to 4900 RUB (increasing every year). It is not possible to extend the protection of patents for inventions beyond the initial 20-year term (except for pharmaceuticals, pesticides and agrochemicals), of patents for utility models beyond the initial 10-year term or of patents for breeding achievements for the initial 30-year term (except for grapes, decorative trees, fruit cultures and forest varieties). The initial term of an industrial design is five years and may be extended multiple times in five-year increments, up to a total of 25 years.
Application, registration and renewal fees for a trademark and appellation of origin
Trademark registration in Russia entails both an application fee and, for approved marks, a registration fee. The application fee is 3500 RUB for up to five classes and 1000 RUB for each additional class. The fee for a substantial examination is 11500 RUB for an application in one class and 2500 RUB for each additional class. The registration fee is 18000 RUB for up to five classes and 1000 RUB for each additional class. A trademark registration is valid for ten years and may be extended for additional 10-year periods. The fee for a 10-year extension is 20000 RUB for up to five classes and 1000 RUB for each additional class.
The application fee for registering an appellation of origin of goods is 13500 RUB, which also covers a substantive examination of the application. The registration fee is 16000 RUB. A registered appellation of origin is valid for ten years. The fee for extending the registration for another ten years is 20000 RUB. The owner of an appellation of origin outside of Russia must submit a document confirming his/her ownership right to it in the place of origin.
What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?
If the patent for an invention, utility model, or industrial design lapses as a result of failure to pay the annual fee, there is a grace period that starts on the date of the lapse and extends until the earlier of three years or the final expiration date of the patent. During the grace period, the patent owner must make a written request for reinstatement and pay the reinstatement fee. The amount of the reinstatement fee is 2.5 times greater than the amount of the annual fee for the year of the submission of the request.
A third party that begins to use, or prepares to use, an invention, utility model or industrial design, the patent for which has lapsed during the grace period, retains the right to its further use free of charge.
If the renewal fee is not paid in a timely manner for a registered trademark or an appellation of origin of the goods, there is a six-month grace period for payment; a late fee of 2500 RUB is also imposed.
What are the requirements to assign ownership of each of the intellectual property rights described above?
A patent or trademark assignment agreement must be in written form and signed by both parties, otherwise the agreement is invalid.
An assignment transfers full ownership and thus must not include any restrictions or limitations on further use of the assigned patent or trademark.
Every assignment agreement between commercial entities must state what consideration is given.
A trademark assignment may not mislead the public or result in confusion as to the origin of goods or services or its manufacturer. This is the case if:
- the assignor wants to keep in its name the trademark registration of certain goods or services that are similar to the assigned ones;
- the assigned trademark is well known;
- the assignor remains the owner of other confusingly similar industrial designs, company names or trademarks protected for similar goods.
An industrial design assignment is also prohibited if it such assignment may lead to confusion by the public as to the goods or their manufacturer.
The right to an appellation of origin of goods or to a company name cannot be assigned.
Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?
Assignment of registered rights must be registered with Rospatent. Failure to register a patent or trademark assignment will result in the assignment not taking effect and being invalid against any third party.
To accomplish the registration of the assignment, a notification, and not the assignment agreement itself, can be submitted to Rospatent. It has to be signed by both parties.
Assignment of unregistered rights (e.g. copyright and neighbouring rights) is not subject to registration.
What are the requirements to licence a third party to use each of the intellectual property rights described above?
A written license agreement signed by both parties is required for licenses of all intellectual property covered in section A, with the exception of appellations of origin and company names, which cannot be licensed. Licensing of a trade name is only possible as a part of the whole enterprise.
The license agreement must precisely identify the intellectual property being licensed (including any official identifiers such as registration number) and state the permitted use(s) of the intellectual property. Rights of use not specifically stated are considered not granted. The duration of a license agreement must not exceed the term of the licensed patent or trademark. A trademark license must indicate the goods and services for which the right to use the trademark is granted.
A licence may be exclusive or non-exclusive. An exclusive licence prohibits the licensor from using the licensed intellectual property in the manners and scope that has been granted under the license unless the agreement provides otherwise.
Compulsory licenses - Patent owners are subject to “use it or lose it” compulsory licensing rules, pursuant to which a compulsory non-exclusive license may be granted by a court if the patent owner has neither used, nor sufficiently exploited the patent within three years (utility models) or four years (inventions or industrial designs) and has refused to conclude a license agreement on generally acceptable terms. ”Insufficiently exploit“ means failing to meet the domestic demand for the patented relevant goods, works or services. Furthermore, if the patent owner cannot exploit his invention without infringing the right of the owner of the other invention or utility model that refused to conclude a license agreement with him on generally acceptable terms, such patent owner can initiate court proceedings demanding that the owner of the other invention or utility model grant him/her a compulsory non-exclusive license to use that other invention or utility model. The court may grant such license if the plaintiff proves that its invention represents an important technical achievement and has a significant economic advantage over that other invention or utility model patent.
Open licenses - The owner may submit to Rospatent a statement granting any person the right to use the patent (i.e. an open licence). Following Rospatent’s publication of the open licence notice, maintenance fees for the relevant patent are reduced by one-half, starting from the following year. The owner must communicate the terms and conditions of the open licence to Rospatent, and such terms and conditions will be published at the owner’s expense. The rights holder must conclude a non-exclusive licensing agreement with any party wishing to use the registered design.
Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?
All patent and trademark licenses must be registered with Rospatent. Failure to register a patent or trademark license will result in the licence not taking effect and being invalid against any third party that later, in good faith, acquires a conflicting interest in the right.
To accomplish the registration of the license, a notification, and not the license agreement itself, can be submitted to Rospatent. It must include the following information: names of parties, registration number of the trademark/patent in question, description of the grant of trademark and/or patent rights contained in the license agreement: whether the license is exclusive or non-exclusive, description of licensed territory, term of license, types of use, right to sublicense if any, grounds under which the agreement may be terminated by each party. It has to be signed by both parties.
Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?
Only an exclusive licensee in Russia is entitled to institute enforcement pro¬ceedings against an infringer without the licensor’s consent, and only where its relevant contractual rights are affected. The owner cannot contractually prohibit an exclusive licensee from enforcing its exclusive rights, but it can join the initiated proceedings as a party. A non-exclusive licensee may, however, initiate enforcement proceedings on behalf of the owner if it is provided with the owner’s power of attorney authorizing such action.
Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?
Infringement of patent rights, copyright and neighbouring rights may be a criminal offence under certain circumstances. The penalties are different based on the gravity of the offence and vary from a fine to community service or imprisonment for up to 6 years.
With regard to copyright, criminal liability exists in cases of plagiarism or in connection with use of a copyrighted work on counterfeit goods provided that such actions meet the criteria of massive scale or have caused major loss to the right holder. The criteria of massive scale and major loss are different for each case.
With regard to patent rights, an action such as plagiarism, compulsion to co-authorship and disclosure of a patent subject matter before publication thereof may qualify as a criminal offence provided it meets the criteria of massive scale or major losses to the right holder.
Illegal use (without consent of the proprietor) of trademarks and appellations of origin falls under criminal liability if it is performed repeatedly or causes major loss. In addition, use of a warning marking (registered trademark/appellation of origin symbol) for a trademark or an appellation of origin that is not registered in Russia may be a criminal offence if it is performed repeatedly or causes major loss.
Additionally, criminal liability for infringement of a trade secret may exist if the confidential information that is covered by the trade secret is disclosed or obtained illegally.
What other enforcement options are available for each of the intellectual property rights described above? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.
In Russia, civil court proceedings are available for all intellectual property rights; this is the most common way of enforcement.
In addition, enforcement of intellectual property rights is possible by filing an unfair competition claim with antimonopoly authorities.
Customs proceedings are available for trademarks, appellations of origin, copyright and neighbouring rights.
The Federal Service for Intellectual Property (Rospatent) provides for certain administrative enforcement options limited to annulment or invalidation of registered IP rights via the Chamber for Patent Disputes.
What is the length and cost of such procedures?
The usual duration of first-instance civil court proceedings is 3-6 months depending on the matter’s complexity. Certain delays may be caused by the court’s workload. This term may be also prolonged by procedural delays. Additionally, some court actions require a mandatory pre-trial dispute resolution period of at least 30 days before lodging the claim.
The amount of official fees prescribed for filing of a court action depends on a particular matter and the monetary amount if that is being claimed. In any event, the fee does not exceed 200 000 RUB. Trial costs also include remuneration to experts, witnesses, translators, etc. as well as attorney’s fees.
The term of consideration of an unfair competition claim should not exceed 9 months. Official fees are not required for filing a claim.
Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.
The majority of court actions related to enforcement of intellectual property rights in Russia are brought before arbitrazh courts entitled to hear commercial disputes involving legal entities and individuals registered as entrepreneurs. The disputes that do not fall under the competence of arbitrazh courts are heard by courts of common jurisdiction.
The special Intellectual Property Court is competent for first-instance resolution and cassations with regard to disputes related to intellectual property rights. In particular, the Intellectual Property Court is competent for first-instance resolution of all matters related to contesting of decisions of the Chamber for Patent Disputes of Rospatent and cancellation of trademarks due to non-use.
Usually court claims related to infringement of intellectual property rights are filed with a local (territorial) court depending on the place of residence/registration of the defendant. Decisions of first-instance courts are appealed before relevant appellate courts. Cassations against courts of appeal decisions are to be filed with the Intellectual Property Court.
Civil court proceedings are initiated by the plaintiff. Customs authorities may also initiate proceedings on administrative offences which are considered by arbitrazh courts.
The courts take decisions based upon oral court hearings.
In addition to the above, the Moscow City Court has special authority over cases of copyright and neighbouring rights infringements on the internet (except photographic works) including injunction remedies that apply before filing a court claim.
What customs procedures are available to stop the import and/or export of infringing goods?
Trademarks, appellations of origin of goods, copyright and neighbouring rights can be included in the Customs Register of Intellectual Property Objects that is run by the Russian Customs authorities or the United Customs Register run by the Eurasian Economic Commission.
The customs registers (either national or regional) allow infringing goods to be stopped at the customs border for 10 days during which a civil court claim against the infringer can be filed. The customs authority can also seize the import or export of infringing goods ex officio with regard to intellectual property rights not included in the Register. However, there may be difficulties with identifying and informing the proper holder of such rights in this case.
Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.
Pre-trial warning letters and a 30-day dispute resolution period are mandatory for intellectual property right enforcement claims related to payment of damages or monetary compensation.
In addition, before filing of a trademark cancellation action due to non-use, it is mandatory to approach the trademark holder with a proposition to settle the matter by assigning or voluntarily cancelling the trademark registration. The duration of the mandatory dispute resolution period for non-use cancellation actions is 2 months.
What options are available to settle intellectual property disputes?
Intellectual property disputes can be settled out of court by means of negotiations between the parties and conclusion of a settlement agreement. It is also possible to enter into a settlement agreement at any stage during the court proceedings. In such a case the settlement is to be confirmed by the court.
What is required to establish infringement of each of the intellectual property rights described above? What evidence is necessary in this context?
Russian civil law provides for general principles of court proceedings according to which each party of the proceedings must prove the facts and circumstances this party has presented. This applies equally to disputes on the matter of intellectual property rights.
At the same time, the Russian Civil Code provides owners of intellectual property rights with a privilege establishing that the burden of proof with regard to lack of fault falls on the defendant. Basically this means that within court proceedings on illegal use of intellectual property rights, a disputed product is recognized as counterfeit unless the defendant proves otherwise. The claimant must confirm ownership of the rights in question and the fact of actual use of the objects in question by the defendant in commercial dealings.
With regard to the use factor, confusing similarity of a sign used on infringing goods with a registered trademark or an appellation of origin of goods (risk of confusion) is usually enough to establish the infringement providing the goods are in commercial dealings.
With respect to copyright (or neighbouring right) a copyright work in its objective form must have been reproduced in a product/another work (ideas, concepts, methods, principles, etc. are not protected by copyright).
An invention is deemed used in a product if the product contains each feature stated in the independent claim of the invention formula, or an equivalent thereto that has become known as such in the particular field of technology before the invention’s priority date.
A utility model is deemed used in a product if the product contains each feature stated in the independent claim of the utility model formula.
An industrial design is deemed used in a product if the product contains all essential features of the design or a combination of features that creates the same general impression on informed consumers as the impression that the industrial design creates under the patent. Another condition is that these products be for the same purpose. This provision brings industrial designs closer to trademarks with a concept of confusing similarity.
The evidence of infringement is different in each case depending on the actual circumstances. The most common evidence includes documents confirming use of intellectual property rights without the consent of their owner in commercial activities (sales, offers for sale, advertisements).
External expert opinions are not necessary to establish confusing similarity with trademarks. However, expert opinions and consumer polls may be used to support the case.
With respect to patent rights, relevant technical experts’ opinions are recommended to confirm the infringement, although the court usually orders its own expert analysis.
How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so? In particular a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence? b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties' expert witness evidence?
There are no technical judges in Russian courts. A court appoints experts with the relevant field of expertise in each particular case. Expert assessments provided by parties are also acceptable depending on actual circumstances and the complexity of the case. In addition, a court may consult with specialists who are professionals in a certain field.
b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
Russian law provides that each party must disclose to the other party evidence to which it refers in the trial before the court hearing or within the term set by the court, and that any party may refer only to the evidence disclosed in advance. However, in practice arbitrazh courts admit evidence provided directly in the court hearings without prior disclosure.
Information and documents from third parties may be obtained by way of attorney’s (advocate’s) requests, although in practice such attorney’s requests are frequently ignored. Courts may also request evidence from third parties during court proceedings, including pursuant to previously ignored attorney’s requests sent by the parties. Parties are also allowed to petition the court to request evidence from persons possessing it.
Another method of collecting evidence is securing it by a notary public, in particular inspecting Internet pages, taking photos and videos, making test purchases.
Securing evidence may be performed by the court itself upon a request from the parties.
How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?
Courts evaluate evidence based on common sense and a full and detailed study of the case. Each piece of evidence is to be scrutinised individually and in combination with others. No special cross-examination procedure is employed, but parties may provide clarifications regarding submitted evidence and also ask questions of experts and witnesses during court hearings. It is also possible to claim evidence fraud, which may result in exclusion of the evidence from the case.
What defences to infringement are available?
Defences to infringement vary depending on a case. The most common defences are arguing that there is no criteria of infringement (lack of confusing similarity with a trademark, non-use of a patent, personal use, non-commercial use, etc.) and that the plaintiff is not entitled to the relevant intellectual property rights. The latter is not directly available with registered rights such as trademarks and patents since a separate invalidity action needs to be filed with the Chamber for Patent Disputes. However non-use cancellation actions with the Intellectual Property Court against trademarks are very common as an infringement defence.
Who can challenge each of the intellectual property rights described above?
The validity of a patent can be challenged by any person during its validity period but - only by a person or legal entity that has a legitimate interest (e.g. a person accused of patent infringement) after its expiry.
With regard to a trademark, an invalidation request may be filed during the validity period only by a person or legal entity that has a legitimate interest.
When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?
During the registration process, a third party can submit objections to Rospatent alleging that the trademark or invention application does not meet registrability requirements. After the registration, an invention, utility model or design patent can be invalidated, in whole or in part, at any time during its period of validity and after the patent validity period expires.
As to the registered trademark, the term for filing for invalidation depends on invalidation grounds:
- a request that is based on absolute grounds can be filed during the entire period of validity of the mark;
- a request that is based on relative grounds (e.g. prior rights) can be filed during five years following the publication date;
- a request that is based on non-use can be filed with respect to the trademark that, as of the date the cancellation request is filed, has not been used for the past three consecutive years.
Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?
A patent may be invalidated, in whole or in part, on the following grounds:
- the patent does not comply with the conditions of patentability (e.g. for an invention claiming that it is not novel, not inventive or not industrially applicable; for a utility model claiming that it is not novel or not industrially applicable; for a design claiming that it is not novel or not original).
- the initial invention or utility model application does not meet the requirement of sufficient disclosure that is required for implementation of the invention or utility model by a skilled person;
- The claims in the patent cited in Rospatent’s final decision contain a feature that was not in the invention or utility model application on the filing date;
- The patent adds or removes essential features of the design (as stipulated in the filed application);
- The patent was granted in breach of the established procedure, where several applications with the same priority date were filed for an identical design.
- The patent was granted with an incorrect indication of the author or owner.
Invalidation actions must be filed with the Chamber of Patent Disputes of Rospatent, except for invalidation actions that are based on incorrect indication of the author or owner. Such cancellation actions must be filed with the IP Court. Rospatent’s decision on an invalidation action may be appealed to the IP Court.
A trademark may be invalidated/cancelled, in whole or in part, based on the following grounds:
- absolute grounds (misleading, lack of distinctiveness);
- relative grounds (e.g. prior rights);
- due to non-use of the trademark;
- recognition of the trademark registration as an abuse of rights or an act of unfair competition.
Generally the invalidation/cancellation actions must be filed with the Chamber of Patent Disputes of Rospatent. However, cancellation action due to non-use must be filed with the IP Court. Prior to filing an invalidation claim due to non-use, a claimant must send a letter to the trademark owner asking it either to withdraw its trademark rights through the Rospatent or to assign the mark in question to the claimant. Applicable statutes provide the trademark owner with two months to perform one of the options. If it fails to do so, the claimant has 30 days (following the two-month period) to file the cancellation claim due to non-use. In such case the legal protection is terminated from the date that the court’s decision enters into force.
Are there any other methods to remove or limit the effect of any of the intellectual property rights described above, for example, declaratory relief or licences of right?
Patent – Compulsory licenses are provided by Russian patent law (see Section D (13). Any person who before the priority date of an invention, utility model or industrial design had in good faith used an identical solution, which was created independently of the inventor, or a solution that only differs from the invention by the equivalent features, or made the necessary preparations for such use, shall retain the right of further free use of the identical solution, provided that the scope thereof is not enlarged. Thus, in a patent infringement case, a defendant may either raise a defence based on his right to prior use of the patented solution or submit a nullity action against the patent allegedly being infringed, provided that the information of prior use of his solution has become publicly available before the priority date thereof.
Trademarks – The owners of identical or similar marks may voluntarily sign a coexistence agreement on the division of territory or special use. In such agreements, parties usually undertake to refrain from deriving any rights from the registrations and use of their trademarks against each other, particularly not to raise objections and oppositions.
What remedies (both interim and final) are available for infringement of each of the intellectual property rights described above?
The remedies available under Russian law for infringement of intellectual property rights described in section A include the following:
- Recognition of a right;
- Cease and desist order regardng infringing activity or actions creating a threat of infringement (although in practice courts often do not consider only a threat of infringement (for example, preparatory actions) as sufficient grounds for satisfying a claim);
- Interim injunctions;
- Withdrawal from the market and destruction of infringing goods;
- Publication of court decisions asserting an infringement (for inventions, utility models, industrial designs, breeding achievements);
- Damages or monetary compensation (monetary compensation is available for infringement of trademarks, patents, copyright (neighbouring rights) and appellations of origin of good);
- Termination of a legal entity or the commercial rights of an individual entrepreneur (in case of repeated or gross violations).
What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?
The cost of the enforcement proceedings depends on the complexity and duration of the case, the volume of evidence, the number of court hearings, etc.
The amount of official fees prescribed for filing of a court action depends on a particular matter and the volume of material claims involved (see Section E (18).
Under the general rule, the winning party receives reimbursement of the incurred costs from the losing party. However, with regard to expenses for representation, it is established in the law that such expenses are reimbursed within reasonable limits. Usually this means that actual costs incurred for representation are higher than the amount reimbursed.