Legal alerts / 13.01.2021

Five Significant Intellectual Property Events of 2020

Based on the results of 2020, we have put together an overview of amendments in the area of intellectual property. Among the most significant new developments, we have singled out:

  • Ratification of the Treaty on a Unified Customs Register of Intellectual Property of the Eurasian Economic Union (EAEU);
  • The blocking of software applications for violations of copyright and related rights;
  • A Ruling of the Russian Supreme Court that courts should bring the amount of a right holder’s compensation into line with the amount of court costs it has incurred;
  • A new intellectual property item – a geographical indication in Russia;
  • New Rules for the Chamber of Patent Disputes to examine cases.

(i) Ratification of the Treaty on a Unified Customs Register of Intellectual Property of the EAEU

Thanks to Russia’s ratification of the Treaty on Trademarks, Service Marks and NTMs (non-traditional marks) of the EAEU, it becomes possible for the EAEU member states (Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia) to include trademarks and other intellectual property items in the Unified Customs Register by submitting a single application to the EAEU Eurasian Economic Commission. The Unified Register helps to ensure the unhindered movement of goods of authorized distributors across the customs borders of EAEU member states, as well as encouraging the protection of exclusive rights of right holders in EAEU countries.

A prerequisite for the inclusion of an object in the unified customs register is that the intellectual property item should have legal protection in each member state of the EAEU.

The second important condition is that the right holder should have sufficient grounds to assume a possible violation of its rights to the intellectual property item in connection with the movement of goods across the customs border of the EAEU or in performing other actions with the goods under customs control. Such grounds may include a previous court decision on the violation of the right holder’s exclusive right to the trademark in an EAEU member state.

The term of protection is no more than two years from the date when an intellectual property item is included in the Single Customs Register, and may not exceed the term of legal protection of the intellectual property item in the EAEU member state in which the term expires earlier.

More information is available here.

(ii) Blocking software applications for violations of copyright and related rights

Changes to the Federal Law “On Information, Information Technologies and the Protection of Information “, which came into force on October 1, 2020, has regulated the procedure for restricting access to software applications containing pirated content, and has introduced the concepts of a “software application” and the “owner of a software application”, which were not defined in the previous version of the law.

Now the right holder, on the basis of a judicial act, has the right to apply to the communications regulator Roskomnadzor to take measures to restrict access to a software application and information that violates copyright and/or related rights through the software application.

Restrictions on access to a software application are lifted on the basis of a judicial act.

In light of the amendments adopted, owners of software applications are advised to be particularly careful in monitoring that the information posted complies with the requirements of Russian law and to respond to appeals from copyright holders in a timely manner.

More information is available here.

(iii) Protection of intellectual rights must not result in losses for a right holder who wins a dispute

The Supreme Court of the Russian Federation reached the significant conclusion that the courts must correlate the amount of compensation received by the right holder of a violated right with the amount of court costs recovered by the defendant from the right holder (Ruling of February 26, 2020 on case No. 305-ES19-26346). This position confirmed the reaction of the Russian judicial system to the problem of negative consequences of reducing the awarded compensation for the right holder.

As far as the protection was concerned of the exclusive right to the trademark “SPRS Therapy” for aesthetic medicine services, the lower courts partially satisfied the claims of the right holder for compensation for an infringement of the exclusive right to the trademark in the amount of 100 000 rubles, which was 50 times less than the original claim. In turn, the defendant applied to the court for the recovery of the court expenses it had incurred in the amount of 392 000 rubles, which was fully satisfied by the court. Thus, the court expenses awarded by the defendant were almost four times higher than the sum of compensation awarded to the right holder.

The right holder’s right to charge the full amount of the fees of the defendant’s representative limits the possibility of protecting intellectual property in such cases.

More information is available here.

(iv) Geographical indications in Russia

A new means of individualization called a “geographical indication” has been protected in Russia since July 2020 along with the name of the place of the location of goods. A geographical indication is understood to be a designation that identifies a product whose characteristics are significantly related to its place of origin. The corresponding amendments have been made to the fourth part of the Civil Code of the Russian Federation and Articles 1 and 23.1 of the Federal Law on the Regulation of the Circulation of Alcoholic Products.

The right to a geographical indication is necessary not only to prevent the registration of a similar name in the name of third parties, but also to prohibit third parties from illegally using a geographical indication in relation to homogeneous goods.

Names of both domestic goods and goods manufactured abroad may be protected as geographical indications. At the same time at least one of the stages of the production of the goods designated by the geographical indication must be carried out in the territory of the geographical item. The term of the right to a geographical indication is 10 years and can be repeatedly extended for another 10 years.

In order to regulate the procedure for granting the exclusive right to a geographical indication, Administrative Regulations were adopted, which came into force on September 15, 2020. According to the regulations in question, the term of the service, the list of documents, as well as the process for the procedure is approved. The procedure for the transformation of the name of a place of origin of goods into a geographical indication is also approved.

More information is available here.

(v) New Rules of the Chamber of Patent Disputes

The new Rules for the consideration by Rospatent of disputes on the protection of intellectual property items, which came into force in September 2020, will allow the most complete and comprehensive consideration of disputes on the protection of intellectual property items.

The updated Rules underwent substantial changes as compared with the previous edition of the Rules dated April 22, 2003, and allow applicants to submit additional arguments regarding objections and applications, additional supporting documents and other materials during the consideration of a dispute.

The powers of the panel members of the Chamber of Patent Disputes during the consideration of a dispute have also changed. Members of the Panel of the Chamber of Patent Disputes may identify additional grounds (other than those indicated by the applicant) for invalidating the granting of legal protection to an intellectual property item or grounds preventing the granting of legal protection. Information on such grounds must be communicated to the parties to the dispute within 5 working days from the date of the meeting of the panel at which they were identified. The parties must be given an opportunity to present their opinion.

The Chamber for Patent Disputes will be entitled to suspend the consideration of a dispute upon the request of one of the parties or by a decision of the panel in the event of the administrative or judicial consideration of a case the decision on which may have significance for the outcome of the dispute. Such suspension will be possible until the entry into force of the decision on the administrative or judicial case in question or until interim measures are removed in respect of the intellectual property item that is the subject matter of the dispute.

More information is available here.

 

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