IP News Overview: Russia & CIS (March to August 2023)
13 December 2024Contents
Government Acts and Departmental Acts
Disputes over Granting and Termination of Protection
Disputes on Violation of Exclusive Rights
Rospatent Practice
1. Well-Known Trade Marks
2. Appellations of Origin of Goods and Geographical Indications
Intellectual Property News of the Eurasian Economic Union and Neighboring Countries
1. Uzbekistan
2. Turkmenistan
3. Georgia
4. Kazakhstan
Laws and Draft Laws
Amendments were made to Article 180 of the Criminal Code of the Russian Federation on liability for the illegal use of means of individualization (Federal Law of 06.04.2024 № 79-FZ)
A law was adopted aimed at further humanization of criminal legislation and liberalization of criminal liability for crimes of an economic nature in order to exclude excessive criminal law impact on entrepreneurs — Federal Law of 06.04.2024 № 79-FZ) “On Amendments to the Criminal Code of the Russian Federation and the Criminal Procedure Code of the Russian Federation” (Article 180 of the Criminal Code of the Russian Federation).
In particular, amendments were made to Article 180 of the Criminal Code of the Russian Federation on liability for the illegal use of means of individualization:
- the amount of damage that serves as the basis for criminal liability was increased from 250 thousand rubles to 400 thousand rubles;
- the multiplicity of the violation remains a separate independent ground for criminal liability;
- Part two of Article 180, which provided for criminal liability for the illegal use of warning labeling in relation to unregistered trademark or appellation of origin, was excluded!
- a lower threshold for the fine was established, calculated as the amount of the convicted person’s income (“in the amount of wages or other income for a period of one to two years”).
The law entered into force on April 17, 2024.
The threshold for large and especially large scale illegal act, for which liability is provided under Article 146 of the Criminal Code of the Russian Federation, has been increased (Federal Law of 12.06.2024 № 133-FZ)
The threshold for a large or especially large illegal act, for which liability is provided under Article 146 of the Criminal Code of the Russian Federation, has been increased to the cost of counterfeit copies of works or rights to use in the amount of 500 thousand rubles (large amount) and up to 2 million rubles (especially large amount).
Federal Law of 12.06.2024 № 133-FZ “On Amendments to the Criminal Code of the Russian Federation” entered into force on June 26, 2024.
“Mirrors” of pirate sites will be blocked faster (Federal Law of 22.06.2024 № 158-FZ)
Federal Law of 22.06.2024 № 158-FZ “On Amendments to the Federal Law “On Information, Information Technologies and the Protection of Information” and Articles 11 and 15 of the Federal Law “On the Activities of Foreign Persons in the Information and Telecommunications Network “Internet” in the Territory of the Russian Federation” (in part specifying the procedure for restricting access to information distributed in violation of copyright and related rights; Article 156-1 of the Law on Information). From October 1, 2024, the powers to make a decision on recognizing a site as a copy of a site blocked for violations of copyright or related rights have been transferred from the Ministry of Digital Development to Roskomnadzor. Corresponding amendments were made to Article 156-1 of the law “On Information, Information Technologies and the Protection of Information”.
The amendment will make it faster to restrict access to “mirrors”. Now, the Ministry of Digital Development makes a decision on recognizing a site as a copy of a prohibited site, then the information is transferred to Roskomnadzor, and only after that the latter sends the telecom operator a requirement to restrict access to the site.
In addition, the amendments allow the obligation to stop issuing information about the “mirror” site in the search results to be extended to all search engine operators, and not only to those that distribute advertising aimed at Russian consumers.
The new order entered into force on October 1, 2024.
The procedure for using objects of rights, the authors or other right holders of which are unknown (so-called “orphan” works) and the examination of trademarks with religious symbols has been regulated (Federal Law of 22.07.2024 № 190-FZ)
Amendments were made to Part IV of the Civil Code, which establish the procedure for using so-called “orphan” works, that is, works whose protection period has presumably not yet expired, but permission to use them cannot be obtained, since their author or other right holder is unknown.
A person wishing to use such a work must take the measures specified in the law to find the right holder. Then you need to contact an accredited collective rights management organization (CRMO), which will post information about the search for the author (right holder) on its website. If the author (right holder) is not identified within 90 working days, the CRMO may issue a non-exclusive paid license for the work to the interested party.
Until the right holder is found, remuneration for the use of the “orphan” work will be credited to a nominal account opened in a Russian bank, the owner of which is the CRMO. In addition to regulating legal relations in relation to “orphan” works, Law № 190-FZ also contains a new provision on trademark protection.
Namely, paragraph 1 of Article 1499 of the Civil Code of the Russian Federation has been supplemented with the following paragraph: “The specifics of the examination of the applied designation with religious symbolism (semantics) are established by the federal executive body carrying out normative legal regulation in the field of intellectual property.”
Currently, a draft of the corresponding order of the Ministry of Economic Development is being prepared for adoption (posted on the portal of draft regulatory legal acts, ID: 149408). It provides that when examining such applications, Rospatent will request the opinion of the Interreligious Council of Russia on the possibility or impossibility of registering the applied designation with religious symbolism (semantics) as a trademark. The conclusion of the Interreligious Council will be taken into account when considering the application.
The law entered into force on October 21, 2024.
The powers of the police to suppress administrative offenses related to the circulation of counterfeit goods are being limited (Federal Law of 22.07.2024 № 192-FZ)
The Code of Administrative Offenses (CAO) has been amended to eliminate the duplication of powers of the police and supervisory authorities in proceedings on administrative offenses. The police will not deal with administrative offenses, the consideration of which is within the competence of supervisory authorities.
Thus, according to the law, from paragraph 1 of part 2 of Article 28.3 of the CAO, which defines the powers of officials of internal affairs bodies to draw up a protocol on offenses, the mention of Article 14.10 of the CAO, establishing liability for the illegal use of means of individualization of goods, works or services, has been excluded.
At the same time, the powers of customs authorities and consumer protection supervisory authorities (Rospotrebnadzor) to initiate cases and draw up a protocol on an administrative offense provided for in Article 14.10 of the CAO are preserved.
The law entered into force on October 21, 2024.
State duty rates have been increased (Federal Law of 08.08.2024 № 259-FZ)
The rates of duties on cases considered by the Supreme Court of the Russian Federation, courts of general jurisdiction, justices of the peace, and arbitration courts have been increased. As stated in the explanatory note to the relevant draft law, the amount of duties has been increased in order to reduce the workload on the judicial system and to suppress abuses by unscrupulous participants in disputes.
For lawsuits to an arbitration court up to 100 thousand rubles, the amount of duty will increase 2.5–5 times, and for large lawsuits, the duty is set depending on the claim amount. For example, with a claim amount of 1 million rubles, the duty will be 55 thousand rubles (before the change — 23 thousand rubles); with a claim amount of 5 million rubles, the duty will be 175 thousand rubles (before the change — 48 thousand rubles).
To challenge a decision of Rospatent in the IP Court now costs 10 thousand rubles for an individual and 50 thousand rubles for a legal entity (previously 300 and 3000 rubles, respectively). To file an appeal to an arbitration court costs — 10,000 rubles for individuals and 30,000 rubles for legal entities; an appeal — 20,000 rubles and 50,000 rubles, respectively; and to complain to the Supreme Court — 30,000 rubles and 80,000 rubles.
New state duty rates came into effect on September 9, 2024.
The Supreme Court provided explanations on the procedure for considering a person’s claim for reimbursement of expenses incurred in resolving a dispute in Rospatent in accordance with the first paragraph of paragraph 2 of Article 1248 of the Civil Code of the Russian Federation (“Review of Judicial Practice of the Supreme Court of the Russian Federation № 1 (2024)”, approved by the Presidium of the Supreme Court of the Russian Federation on 29.05.2024)
Based on the second paragraph of paragraph 2 of Article 1248 of the Civil Code of the Russian Federation, the expenses for the dispute considered in an administrative procedure in Rospatent incurred by the party in whose favor Rospatent made the decision, are to be reimbursed by the other party to the dispute. This rule also defines the composition of such expenses.
If Rospatent refuses to satisfy the objection to the patent, trademark, appellation of origin or GI, the decision is considered to be made in favor of the right holder. In this case, his expenses are to be reimbursed.
If there is a dispute concerning the reimbursement of such expenses, including their composition and amount, the party’s claim for reimbursement of the relevant expenses is subject to consideration by the arbitration court in compliance with the general rules of territorial jurisdiction in the order of claim proceedings, based on the principles of necessity, reasonableness and proportionality.
Judicial acts of arbitration courts of the constituent entities of the Russian Federation, arbitration courts of appeal in the case of reimbursement of expenses are appealed in cassation proceedings to the Intellectual Property Court (hereinafter referred to as the IP Court).
The party making a claim for reimbursement of expenses must prove the fact of their incurring, as well as the link between the incurred expenses and the dispute considered by Rospatent with its participation.
If Rospatent partially satisfies the objection, then the court issues a decision on the reimbursement of expenses in proportion to the amount of satisfied claims. At the same time, the court takes into account the extent to which the formula of the contested patent is preserved in the new patent (how many points of the formula of the patent proposed by the applicant are preserved) and in relation to what number of goods (services) the legal protection of the trademark is preserved.
The party to the dispute who disagrees with the decision of Rospatent made on the objection may challenge this decision in the IP Court. If, when considering the application for reimbursement of expenses, the court becomes aware of the challenge of the corresponding decision of Rospatent, proceedings on the case of reimbursement of expenses shall be suspended until the entry into force of the judicial act of the IP Court on the legality of the challenged decision.
If the IP Court recognizes the decision of Rospatent and makes a legal decision, the dispute is considered resolved in favor of the party that challenged this decision in court. Consequently, based on the universality of the legislator’s will and the principle of equality, the expenses that this party incurred in connection with the consideration of the dispute with its participation in Rospatent are subject to reimbursement, taking into account the second paragraph of paragraph 2 of Article 1248 of the Civil Code of the Russian Federation and the rules set out above.
A court decision on reimbursement of expenses that has entered into legal force, made before the Intellectual Property Court recognizes the decision of Rospatent as illegal, may be reviewed in accordance with the rules for considering an application for review of a judicial act based on new or newly discovered circumstances.
The President of the Russian Federation established the procedure for acquiring exclusive rights from persons from unfriendly countries (Presidential Decree of the Russian Federation of 20.05.2024 № 430)
Starting from May 20, 2024, in order to acquire exclusive rights to certain objects of intellectual property from persons in unfriendly countries under an alienation agreement, it is necessary to obtain permission from the Government Commission for Control over Foreign Investment. It has the right to issue a document at the request of the acquirer (for example, a resident), the right holder, or their representatives.
The procedure for issuing permission is established by the Rules approved by Government Decree of 06.02.2024 № 295 (as amended on 20.07.2024).
The provisions of the Decree do not apply:
- to transactions to acquire rights to works of science, literature and art, to results of performing activities (performances), to phonograms, to broadcast communications of organizations of broadcasting or cable broadcasting;
- to transactions where the amount of the acquirer’s obligations does not exceed 15 million rubles or the equivalent amount in foreign currency.
In addition, the Decree regulates the procedure for fulfilling monetary obligations under such transactions by transferring funds to a special ruble account of type “O”, including obligations under transactions that were concluded before the Decree came into force, but monetary obligations under which were not fully or partially fulfilled.
Government Enactments and Departmental Enactments
The procedure for making decisions on the use of inventions, utility models and industrial designs in the interests of the state and citizens has been clarified (Government Decree of the Russian Federation of 27.03.2024 № 380)
Pursuant to Presidential Decree of the Russian Federation of 15.02.2024 № 122, the Government adopted a resolution “On the Subcommission on Issues of Using Inventions, Utility Models and Industrial Designs to Ensure the Economic Security of the Russian Federation under the Government Commission on Economic Development and Integration”, which approved the Regulations on the Subcommission and the Rules for Preparing Subcommission Decisions on the Use of Inventions, Utility Models and Industrial Designs without the consent of patent holders, with notification thereof to them as soon as possible and with the payment of proportionate compensation to them.
The tasks of the subcommission are to consider applications for the use of inventions, utility models, industrial designs without the consent of patent holders, with notification thereof to them as soon as possible and with the payment of proportionate compensation to them. Applications may be submitted by Russian legal entities in whose authorized (share) capital the share of direct or indirect (through third parties) participation of the Russian Federation, constituent entities of the Russian Federation, municipalities and (or) citizens of the Russian Federation exceeds 75 percent, as well as the preparation of decisions on the use of the results of intellectual activity.
To prepare decisions, the subcommission, among other things, considers the conclusions of federal executive bodies submitted by the authorized body, considers draft decisions made by the Government of the Russian Federation in case of extreme necessity related to ensuring the defense and security of the state, protecting the life and health of citizens, in accordance with Article 1360 of the Civil Code, submitted by the authorized body, provides recommendations to legal entities, if necessary, including on the forms of documents submitted to the subcommission.
The resolution also amended the Methodology for determining the amount of compensation paid to the patent holder when making a decision on the use of his inventions, utility models and industrial designs without his consent. In particular, the provision on zero compensation paid to a patent holder from an unfriendly country has been canceled.
However, the Methodology has been supplemented with a provision according to which, in the case of a patent holder from an unfriendly country, compensation is paid to him to a special ruble account of type “O”.
Amendments have been made to the list of goods allowed for parallel import (Order of the Ministry of Industry and Trade of Russia dated 05.07.2024 № 3028)
By order of the Ministry of Industry and Trade, amendments were made to the list of goods (groups of goods) in relation to which the provisions of Articles 1252, 1254, paragraph 5 of Article 1286.1, Articles 1301, 1311, 1406.1, subparagraph 1 of Article 1446, Articles 1472, 1515 and 1537 of the Civil Code do not apply if these goods are original and are placed on the market outside of the Russian Federation by right holders or with their consent.
Many groups of goods have been supplemented with the trademarks HYUNDAI, KIA and VALEO. Parallel import of HARLEY-DAVIDSON brand motorcycles is also allowed.
The date of entry into force of the amendments is 11.09.2024, with the exception of those amendments that will enter into force on 10.03.2025.
Amendments have been made to the Requirements for applications and the Rules for their consideration in order to consider applications for inventions and utility models in the field of information technology (Order of the Ministry of Economic Development of Russia dated 15.03.2024 № 148)
By order of the Ministry of Economic Development, amendments were made to the regulatory legal acts regulating the preparation and consideration of applications for the issuance of a patent for an invention and a utility model.
In particular, the Requirements for documents of the application for the issuance of a patent for an invention and the Requirements for documents of the application for the issuance of a patent for a utility model, as well as the Rules for preparing, filing and considering an application for an invention and the Rules for filing, preparing and considering an application for a utility model have been supplemented with provisions relating to inventions and utility models in the field of information technology (IT).
Inventions (utility models) in the field of IT are understood to mean technical solutions that are characterized by the use of programmable multifunctional means, in particular computer devices, information and telecommunication networks, at least one of the features of which is implemented using software, as well as technical solutions relating to machine-readable information carriers containing a computer program or data, the form or content of which is intended for the operation of programmable multifunctional means. Special regulation has also been introduced in relation to technical solutions based on artificial intelligence.
In relation to such inventions (utility models), signs by which they can be characterized are specially formulated, it is indicated in which cases the result obtained from such solutions is recognized as technical.
Rospatent will not publish information about a number of persons in the official bulletin at their request (Government Decree of the Russian Federation of 02.09.2024 № 1209)
From September 30, 2024, applicants, right holders and parties to agreements on the disposal of exclusive rights to certain objects of intellectual property can submit an application to Rospatent requesting that information about them not be published in the official bulletin of Rospatent.
The application can be submitted in relation to inventions, utility models, industrial designs, trademarks, computer programs, databases and topologies of integrated circuits.
At the same time, this information will still be reflected in the corresponding registers kept by Rospatent.
The new procedure will be in effect until December 31, 2025.
Disputes over Granting and Termination of Protection
Rospatent is not entitled to change the reasons for the objection on the basis of clause 45 of the Rules for considering disputes in Rospatent (decision of the Presidium of the IP Court of 16.08.2024 in case № SIP-1302/2023)
The Intellectual Property Court considered and granted the application of LLC “ROMANGRUP” to declare invalid clause 45 of the Rules for considering and resolving disputes in an administrative procedure by the federal executive body for intellectual property, approved by the orders of the Ministry of Education and Science and the Ministry of Economic Development of Russia dated 30.04.2020 № 644/261, in part concerning the possibility of identifying and taking into account by members of the board the grounds for declaring invalid the granting of legal protection to an already protected object at the stage of considering an objection against granting legal protection to such an object.
The Presidium of the IP Court established that this rule does not comply with the provisions of Articles 1398, 1512, 1513, 1535 of the Civil Code of the Russian Federation, which have greater legal force, since challenging the validity of a patent or trademark registration is only possible by filing corresponding objections by third parties.
The Civil Code of the Russian Federation does not provide Rospatent with any other opportunity, outside the framework of the submitted objection, to verify the patentability of a registered trademark or invention. Rospatent is not entitled to independently formulate and consider grounds for declaring a patent or trademark registration invalid.
Therefore, Rospatent is not entitled to identify and evaluate any new grounds not disclosed in the objection.
The IP Court declared clause 45 of the Rules invalid in the relevant part.
An earlier application for an invention by another applicant is not included in the prior art when analyzing the novelty of the invention according to a later application if the applications have the same inventors and the later application is filed within the validity period of the 6-month novelty grace period (decision of the IP Court of July 5, 2024 in case № SIP-1078/2023)
In application for invention № 2022124555, Rospatent, citing clause 2 of Article 1350 of the Civil Code of the Russian Federation, included application № 2022104157 of another applicant, which had an earlier priority date, in the prior art, and the patent was refused for the later application.
The applicant appealed the refusal to the Intellectual Property Court (case № SIP-1078/2023), citing Rospatent’s incorrect application of substantive law. The applicant insisted that since the composition of the inventors in the application under consideration and in the application opposed to it coincide, then the information about the invention disclosed in the earlier application was received from the authors of the invention under consideration.
The applicant indicated that the date of disclosure of information in relation to the application opposed to it should be considered the date of publication of the patent issued for it (the application itself was not published).
And since the later application was filed within the 6-month “author’s grace period”, disclosure of the invention in such an earlier application should not affect the patentability of the claimed invention.
The Intellectual Property Court agreed with the applicant and pointed out the following.
Based on the provisions of clause 3 of Article 1350 of the Civil Code of the Russian Federation, the publication of the description of the invention to the patent issued for the application, in which the composition of the applicants and (or) inventors at least partially coincides with the composition of the applicants and (or) inventors of the claimed invention, is not a circumstance that prevents the recognition of patentability of the claimed invention, provided that the application for the issuance of a patent for this invention is filed with Rospatent within six months from the date of publication of the description of the invention to the patent.
Rospatent’s position that the applicant in the application opposed to it is a different person does not negate the fact that the inventors of the inventions in the application opposed to it and the disputed application are the same persons.
The court overturned the decision of Rospatent to refuse to grant a patent citing an earlier application and ordered Rospatent to continue consideration of application № 2022124555.
Abusive expressions cannot be registered as a trademark (decision of Rospatent (PPS) of 12.03.2024 on application № 2022737232)
Rospatent has made a decision to refuse state registration as a trademark of the designation under application № 2022737232 in relation to all claimed goods and services in classes 03, 09, 25, 37 of the International Classification of Goods and Services.
Registration was refused on the basis of subparagraph 2 of paragraph 3 of Article 1483 of the Code, which does not allow state registration as trademarks of designations that constitute or contain elements that contradict public interests, the principles of humanity and morality.
Having considered the applicant’s objection to the decision to refuse registration, the board of the patent dispute chamber agreed with the examination, noting that the main elements in the claimed designation that attract the attention of consumers are the verbal elements “YADRENA WASH”, which are perceived as transliteration in Latin letters of the phrase “yadrenа vosh”, which, according to the phraseological dictionary of the Russian literary language, is an abusive expression of reprimanding someone, dissatisfaction with someone, something. In this regard, the verbal elements “YADRENA WASH” are perceived as negative and indecent.
Regarding the applicant’s opinion that the word “WASH” in English means “washing, to wash, to rinse, to wash off”, and, therefore, the designation “YADRENA WASH” will be associated with the consumer with washing something, the board noted that despite the fact that the word “WASH” is a lexical unit of the English language, having the given meanings, in combination with the element “YADRENA” the verbal elements of the claimed designation will be perceived in the minds of consumers as the vulgar expression “yadrena vosh”.
The board of the patent dispute chamber considered that the claimed designation has features that contradict public interests, the principles of morality, in connection with which its registration as a trademark will contradict the requirements of subparagraph 2 of paragraph 3 of Article 1483 of the Civil Code of the Russian Federation.
Due to the incorrect indication of the patent holder, the patent can be challenged by any person who has become aware of such a violation (decision of the IP Court of March 7, 2024 in case № SIP-793/2023)
Russian patent № 175176 for a utility model “Windshield Wiper Drive” was issued on application № 2017115093, filed on 04.27.2017, indicating A.A. Ageev as the author and LLC “Zavod “AVTOPRIBOR” as the patent holder. A lawsuit was filed with the IP Court to declare patent № 175176 invalid due to the incorrect indication of the patent holder.
The plaintiff provided evidence that the disputed utility model was created by A.A. Ageev in 2013 as part of his job duties during his employment at OJSC “Zavod “Avtopribor” (hereinafter referred to as the Factory; declared bankrupt and liquidated in 2021) and was used by the Factory in 2014 in the production of windshield wiper drives. In particular, from the records in Ageev’s work book, it follows that he worked as an engineer at OJSC “Zavod “Avtopribor” from 2002 to 2015, and then moved to work for the Defendant.
Defendant 2 — author A.A. Ageev — confirmed the creation of the corresponding technical solution during his work at the Factory and expressed the opinion that the Defendant could not be the patent holder of the disputed utility model. Ageev also indicated that he did not have special knowledge in the field of intellectual property at the time of obtaining the disputed patent, and therefore could not assess the Defendant’s actions.
The court concluded that the evidence available in the materials of the case in their totality and mutual connection, the explanations of A.A. Ageev himself, not refuted by the Defendant, confirm that the disputed technical solution, patented as a utility model under Russian patent № 175176, was created by A.A. Ageev in the period from 2013 to 2014, that is, before his transfer to work for the Defendant.
No evidence was presented of the existence of any grounds provided for by law for the emergence or transfer to the Defendant of the right to obtain a patent for the disputed utility model, and the Defendant did not make such arguments.
The court concluded that there are no legal grounds for indicating the Defendant as the patent holder in the disputed patent.
The Defendant’s reference to the Plaintiff’s lack of interest in challenging the disputed patent cannot be taken into account. The legislation explicitly provides for the right of any person who has become aware of violations to demand that a patent for a utility model be declared invalid, including on grounds related to the incorrect indication of the author and patent holder of the utility model. Such a person is not required to confirm that he has a private interest in having the patent declared invalid.
In the absence of his own claims to authorship and/or patent ownership, such a person may demand that such a patent be declared invalid in its entirety, which follows from subparagraph 5 of paragraph 1 of Article 1398 of the Civil Code of the Russian Federation.
The court granted the plaintiff’s claims and declared patent № 175176 for a utility model invalid in its entirety.
Referring an objection for reconsideration after signing and sending the decision is illegal (decision of the IP Court of August 5, 2024 in case № SIP-285/2024)
The company applied for registration of the designation under application № 2022744531 in relation to a wide range of goods in classes 25, 29, 30, 32 and services in classes 35, 43 of the International Classification of Goods and Services.
On 08.05.2023, Rospatent made a decision to refuse state registration of the designation under application № 2022744531 as a trademark due to non-compliance with the requirements of paragraph 6 of Article 1483 of the Civil Code of the Russian Federation.
On 18.09.2023, the company filed an objection to the said decision, upon consideration of which Rospatent found the arguments set forth in it convincing and on 28.12.2023 made a decision to grant the objection, revoked the decision of 08.05.2023 and registered the claimed designation as a trademark. This decision was sent to the company along with a cover letter.
Later, Rospatent informed the company that, on the basis of the resolution of the head of Rospatent, the company’s objection was referred for reconsideration.
Considering such actions of Rospatent illegal, the company appealed to the Intellectual Property Court with a statement to declare the actions of Rospatent illegal.
In court, Rospatent explained its actions by a technical failure of the automated system, as a result of which the decision of Rospatent was mistakenly signed with an electronic digital signature and automatically sent to the applicant by e-mail. Upon detection of this error, the applicant was notified of the reconsideration of the objection on the basis of the resolution of the head of Rospatent in accordance with clause 53 of the Rules.
The court found that the resolution of the deputy head of Rospatent on the need for Rospatent to reconsider is dated 01.26.2024, i.e. after the decision of 12.28.2023 was made.
The court noted that the current legislation does not empower Rospatent with the authority to declare a decision made by it as a result of considering an objection invalid, as well as to appoint a reconsideration of the objection, the decision on which has already entered into force.
The court rejected Rospatent’s argument that the draft decision of 12.28.2023 was signed with an electronic digital signature and automatically sent to the applicant by e-mail as a result of a technical failure of the automated system that occurred. Evidence that there was a technical malfunction in Rospatent’s automated system, which led to the signing of the draft decision of 12.28.2023 with an electronic digital signature, was not presented to the case file.
Taking into account the foregoing, the court found the referral of the objection of 18.09.2023 for reconsideration to be illegal.
Cascade filing of divided applications is legal (Resolution of the Supreme Court of the Russian Federation of 17.06.2024 in case № SIP-570/2022 and Resolution of the Supreme Court of the Russian Federation of 17.06.2024 in case № SIP-552/2022)
In June, the Supreme Court of the Russian Federation made decisions on two cases (SIP-552/2022 and SIP-570/2022) on challenging the validity of patents for inventions granted as a result of the sequential (cascade) division of applications for inventions from the originally filed application.
In these cases, Rospatent retained the priority of the very first application for the subsequent divided application, despite the fact that by the time this divided application was filed, a patent had already been issued for the original application, but the examination for the previous divided application was still in progress.
The fact is that if this were not allowed, and if only the very first application remained the original for all divided applications, then after the completion of its consideration (issuance of a patent, recognition as withdrawn or exhaustion of the possibility of challenging the refusal), subsequent divided applications would no longer inherit the priority of the original application, and the issuance of a patent for most subsequent divided applications would become impossible. After all, the priority for the divided application then would have to be established based on the date of its actual filing with Rospatent, and the inventions claimed in them would not meet the requirement of “novelty” — they would be opposed by information from the very first application, which would already be published by the time most divided applications were filed. It was on this interpretation of the concept of “original application” that the person who filed the objection to the patents issued for subsequent divided applications insisted.
Nevertheless, Rospatent retained the priority of the very first application for the subsequent divided application, despite the fact that by the time this divided application was filed, a patent had already been issued for the original application, but the examination for the previous divided application was still in progress.
The dispute in these cases arose precisely on the issue of whether cascade division of applications should be allowed, or whether all divided applications, in order to retain the priority of the original (parent, original) application, should be filed while the parent application is still under consideration.
When considering the dispute in the Intellectual Property Court, the court first agreed with Rospatent’s position on the admissibility of cascade division. However, the Presidium of the IP Court took a different position and declared cascade division with priority retention illegal.
According to the Presidium, only the very first application is the original for the purposes of filing divided applications in accordance with clause 4 of Article 1381 of the Civil Code of the Russian Federation. Neither Rospatent nor the patent holder agreed with this and appealed to the Supreme Court with an appeal.
In its June Resolutions, the Supreme Court overturned the resolution of the Presidium of the IP Court and upheld the resolution of the first instance IP Court, thereby confirming the correctness of Rospatent. Each divided application may act as the original application for filing a subsequent divided application. At the same time, all divided applications inherit the filing date and priority date of the very first (parent) application.
A Russian vodka producer has been denied the right to use the appellation of origin “Russkaya Vodka” (Resolution of the Presidium of the IP Court of May 30, 2024 in case № SIP-589/2023)
Russian LLC “J.J. Whitley Distillery” (hereinafter referred to as the Company) applied to Rospatent with application № 2021762195 for the grant of exclusive rights to the previously registered name of origin of goods “RUSSKAYA VODKA” for the goods “vodka”. The application materials include conclusions from the authorized body, according to which the vodka produced by the applicant, J.J. WHITLEY ARTISANAL VODKA and J.J. WHITLEY ARTISINAL, meets the special properties indicated in the State Register of Geographical Indications and Names of Origin of Goods of the Russian Federation (hereinafter referred to as the State Register), for the goods “vodka”, for which the appellation of origin under № 65 is registered.
Subsequently, the same authorized body sent an appeal to Rospatent, in which it pointed to the possible negative consequences of granting exclusive rights to the appellation of origin “RUSSKAYA VODKA” to a company affiliated with a British alcoholic beverage producer, as well as insurmountable obstacles that will arise for Russian producers when registering the named designation in the UK.
In addition, attention was drawn to the possibility of misleading consumers when simultaneously using the appellation of origin “Russkaya Vodka” and trademarks № 808565 and № 800380 , containing the designation “J.J. Whitley”, identical to the company name of the British company.
Rospatent refused to grant the Company exclusive rights to the previously registered name of origin of goods “RUSSKAYA VODKA” due to its ability to mislead the consumer regarding the goods or its manufacturer (subparagraph 5 of paragraph 2 of Article 1525 of the Civil Code of the Russian Federation).
Disagreeing with the decision of Rospatent, the company appealed to the Intellectual Property Court with a statement to declare the refusal invalid.
The court of first instance agreed with the conclusion of Rospatent, and the Company filed an appeal with the Presidium of the IP Court. The Presidium of the IP Court came to the following conclusions.
According to the law, any person who, within the boundaries of the same geographical object, produces goods that have the special properties indicated in the State Register, has the right to apply for the grant of exclusive rights to the previously registered appellation of origin.
The basis for granting exclusive rights to a previously registered appellation of origin is the confirmation by the person of the production of goods within a certain geographical object and possessing special properties.
Thus, taking into account the goals of granting exclusive rights to an already registered appellation of origin, the basis for such granting is primarily the production by the applicant of a certain product with special properties related exclusively to the natural conditions and (or) human factors characteristic of the corresponding geographical object, and meeting the requirements of the provisions of paragraph 1 of Article 1516 of the Civil Code of the Russian Federation.
Verification for compliance of the designation with the requirements of paragraph 2 of Article 1516 of the Civil Code of the Russian Federation is carried out when filing an application for the initial registration of the name of origin of goods as a designation in relation to goods that have special properties.
Paragraph 19 of the Rules, which defines the procedure for conducting an examination of the claimed designation, including for a previously registered name of origin of goods, and, in fact, does not establish differences between the procedures for the initial examination of the designation itself and the examination of the grant of rights to an already protected designation, cannot contradict the provisions of civil legislation, which have greater legal force.
According to Article 12 of the Civil Code of the Russian Federation, when considering disputes related to the protection of civil rights, the court does not apply a normative act that contradicts the law, regardless of whether this act is recognized as invalid (fourth paragraph of paragraph 9 of the resolution of the Plenum of the Supreme Court of the Russian Federation of 23.06.2015 № 25).
Based on the foregoing, the Presidium of the IP Court considered the interpretation by the court of first instance of the provisions of subparagraph 5 of paragraph 2 of Article 1516 of the Civil Code of the Russian Federation and the conclusions made by it on the possibility of misleading consumers by granting the company the right to a previously registered name of origin of goods on the basis of the specified norms to be unreasonable. At the same time, the Presidium of the IP Court came to the conclusion that the erroneous interpretation of the norms of substantive law in this case did not lead to the adoption of an incorrect decision.
According to paragraph 1 of Article 10 of the Civil Code of the Russian Federation, the exercise of civil rights solely with the intention of causing harm to another person, actions in circumvention of the law for an unlawful purpose, as well as other knowingly unfair exercise of civil rights (abuse of right) are not allowed.
The factual circumstances established by the court of first instance do not indicate that the use of the appellation of origin “RUSSKAYA VODKA” together with trademarks is capable of misleading consumers, but that the actions of the Company related to acquiring exclusive rights to a previously registered appellation of origin are unfair and capable of leading to a ban on other Russian producers from using such a designation in the territory of other states and, as the court of first instance correctly pointed out, discrediting the goods and devaluing this name of origin of goods in foreign markets.
Thus, the Presidium of the IP Court noted, the court of first instance established the factual circumstances, but applied the wrong rule of law to them. Nevertheless, the Presidium of the IP Court left the decision of the court of first instance unchanged.
The company filed a cassation appeal to the Supreme Court of the Russian Federation, but its request to review the decision of the IP Court was denied (Resolution of the Supreme Court of the Russian Federation of 30.08.2024 № 300-ES24-16003).
Disputes on Violation of Exclusive Rights
Dispute over the violation of 25 trademarks belonging to three companies (Chanel, Christian Dior, World Brand Marks) by one defendant. The IP Court ordered the court of first instance to reconsider the amount of compensation
Chanel SARL (Geneva, Switzerland), Parfums Christian Dior (Paris, France) and World Branding Mark S.A. (Geneva, Switzerland) filed a lawsuit against an individual entrepreneur (IE) for compensation in the amount of 650,000 rubles for violating their exclusive rights to trademarks.
The IE sold counterfeit goods marked with the plaintiffs’ trademarks. 10 of the marks used on the counterfeit goods belong to Chanel SARL, 13 marks belong to Parfums Christian Dior and 2 marks belong to World Branding Marks S.A. The plaintiffs asked to recover 50 thousand rubles for each infringed mark of Chanel SARL and 10 thousand rubles for each infringed mark of Christian Dior and World Branding Mark S.A.
The court of first instance established the fact of infringement, but recovered from the IE in favor of each of the plaintiffs 10 thousand rubles; a total of 30 thousand rubles. At the same time, the court of first instance, guided by paragraph 33 of the Review of Judicial Practice in Cases Related to the Resolution of Disputes on the Protection of Intellectual Property, approved by the Presidium of the Supreme Court of the Russian Federation on September 23, 2015, and paragraph 68 of the resolution of the Plenum of the Supreme Court of the Russian Federation of April 23, 2019 № 10, considered that the trademarks of each of the plaintiffs form a series of related marks, united by common elements — the trade name of the right holders, and, therefore, the violation of rights to several such trademarks constitutes a single violation.
The plaintiffs appealed this decision first to the court of appeal, and then to the Intellectual Property Court, which did not agree with the approach described by the lower courts.
The IP Court noted that a series of trademarks means three or more trademarks belonging to one right holder, based on one element (verbal, figurative or combined).
To conclude that the element forms a series of trademarks belonging to one manufacturer, it is necessary that such a dominant element be repeated in all trademarks. Taking into account the distribution of the burden of proof in this category of cases, it is the defendant who must prove that the trademarks in respect of which the claim is filed actually establish the protection of the same designation in different variations, have differences that do not change the essence of the trademark, and regardless of the variation of the reproduction of the designation, in the eyes of consumers, are perceived as one designation, which retains its recognizability.
The court drew attention to the fact that the protected trademarks are trademarks of different types: verbal, figurative, volumetric, combined. The conclusion of the lower courts about the connection of the trademarks of each right holder by one dominant element — the name of this right holder is not motivated, and, therefore, the final conclusion about the number of violations committed by the defendant is also incorrect, and, as a consequence, the amount of compensation.
The IP Court overturned the decisions of the lower courts and remanded the case for reconsideration to the court of first instance.
An affidavit in itself does not prove the fact of ownership of exclusive rights to the disputed work (Resolution of the Supreme Court of the Russian Federation of 15.08.2024 № 302-ЭС24-3009 in case № А33-19084/2022)
Carte Blanche Greetings Limited (UK) filed a lawsuit against three individual entrepreneurs and an organization for compensation for violating exclusive copyright to 2 images of a character from the Blue Nose Friends Characters series in the total amount of 2,880,000 rubles.
The court of first instance and the court of appeal established the fact of copyright infringement, but recovered from the defendants compensation in the total amount of 360,000 rubles. The Intellectual Property Court upheld the decisions of the lower courts. At the same time, the courts of three instances accepted from the plaintiff as confirmation of his ownership of exclusive rights a notarized affidavit (written testimony under oath) of the company’s financial director, John Anthony Willis.
In response to the defendants’ objections regarding the lack of proof of the company’s ownership of exclusive rights to the disputed work, the courts indicated that the materials of the case do not indicate that the right holder of exclusive rights to the work named in the affidavit is another person.
The Supreme Court, where the defendants who disagreed with the decisions made appealed, noted the following.
The initial subject of copyright is a citizen (natural person), who acquires the entire complex of exclusive property and personal non-property rights. Any other persons, in order to prove their rights, must provide evidence of the transfer to them of the property copyright initially arising with the author (the presence of the entire chain of agreements or other legal grounds that determine the transfer of such rights from the author).
The affidavit submitted by the plaintiff does not contain information about the history and date of creation of the disputed image of the Blue Nose Friends character, there is no information about the specific author, employment contracts and other agreements or other legal grounds that determine the transfer of any rights from the author. This document only indicates that the Company considers itself to be the holder of exclusive rights to the image of the character.
The courts should have established and assessed the circumstances of the creation of the work (the emergence of copyright with a specific person) and the transfer of exclusive rights to it to the plaintiff from the original right holder (author of the work) on general grounds of proof, which was not done.
The affidavit submitted by the plaintiff in itself, in the absence of agreements (other agreements and evidence), cannot serve as sufficient grounds for establishing the fact of ownership of exclusive rights to the work in respect of which the claim is filed, since it does not disclose the author, the circumstances of the transfer of exclusive rights to the object of copyright, methods and conditions of its use.
The Supreme Court also drew attention to the fact that the statement of claim does not contain a reference to the norms of applicable law governing the procedure for the emergence, transfer, and protection of copyrights and exclusive rights in the country of origin of the Company. The Supreme Court noted that the court is not entitled by its actions to place any of the parties in a privileged position, as well as to diminish the rights of one of the parties.
Taking into account the purpose pursued by the plaintiff when applying to the court for the protection of the violated right, taking into account the grounds for the stated claim, the Supreme Court considered that without examining the circumstances described above, it is impossible to conclude that there are or are not grounds for granting the claim, and in case of such grounds — about the amount of compensation.
The Supreme Court overturned the acts of the lower courts and remanded the case for reconsideration to the court of first instance.
Rospatent Practice
1. Well-known trademarks
From March to August 2024, Rospatent recognized the following marks as well-known:
Number in the List - 260
Right Holder — Sberbank PJSC
Goods/Services — 35 — banking services
Date of Becoming Well-Known — 01.01.2024
Number in the List - 261
Right Holder — Bashkirskaya Sodovaya Companiya JSC
Goods/Services — 30 — food soda
Date of Becoming Well-Known — 01.01.2020
Number in the List - 262*
Right Holder —Sport And Fashion Management Pte. Ltd. (Singapore)
Goods/Services — 35 — sales promotion for third parties of goods
for sports, tourism and outdoor recreation,
including sales promotion of clothing, headwear,
footwear, backpacks, bags and accessories thereto,
goods and equipment for water sports; services
of stores and online stores for wholesale and retail
sale of goods for sports, tourism and outdoor
recreation, including the sale of clothing, headwear,
footwear, backpacks, bags and accessories thereto,
goods and equipment for water sports; services
of sports stores for retail and wholesale sales
of goods for sports, tourism and outdoor recreation,
clothing, headwear, footwear, backpacks, bags
and accessories thereto, goods and equipment
for water sports, including trade in these goods
over the Internet; promotion of sports goods
and services of sports stores and online stores
through sponsorship of sporting events
Date of Becoming Well-Known —17.07.2017
*The designation has been recognized as a well-known trademark of Sport And Fashion Management Pte. Ltd. (Singapore) by the decision of the IP Court of 06.12.2023 in case № SIP-647/2023, left in force by the resolution of the Presidium of the IP Court of 01.04.2024.
During the same period, Rospatent refused to recognize the following designations as well-known trademarks:
— the designation used as a trademark for beer, in the name of JSC “AB InBev Efes”. As a basis for the refusal, Rospatent indicated that the submitted documents (including the results of a consumer survey) cannot indicate that the designation “STARY MELNIK” has a sufficiently high level of awareness in relation to the applicant;
— trademark № 126030, owned by LLC “Mondelez Rus”, in relation to the goods “cookies”. Rospatent refused the applicant to recognize the designation as a well-known mark (decision of 31.05.2024 case № 2023B02395), indicating that the materials submitted by the applicant are not sufficient to recognize the trademark “YUBILEINOE” under certificate № 126030 as well-known as of 31.05.2009 in the name of the Applicant, since the board did not establish from the submitted materials on 31.05.2009 the fact of a stable associative link between the designated designation “YUBILEINOE” under trademark № 126030 and the Applicant LLC “Mondelez Rus”. In addition, the documents submitted by the applicant contain a reference to OJSC “Bolshevik”, which contributes to strengthening the association of the designation “YUBILEINOE” with OJSC “Bolshevik”, as the manufacturer of “Yubileinoe” cookies, and not with the Applicant;
- 2gis — a verbal designation used by LLC “DublGIS” for the services “providing a business directory via the global computer network”, “providing information on travel routes”, “providing online geographical maps” and “providing search tools”. Rospatent’s refusal notes that it is impossible to establish the high awareness of the claimed designation “2GIS” in relation to the specified services for the requested date of 01.01.2021 from the materials submitted by the applicant. The board’s conclusion notes that the fact of using the designation in relation to the services for which its well-known status is being requested, in itself, does not indicate that the designation has acquired the status of a well-known trademark;
— in the name of individual entrepreneur Yuri Gusev. Rospatent justified the refusal by the fact that the evidence submitted by the applicant does not confirm the wide awareness of the claimed designation for the requested date — 15.01.2017, and also does not confirm that the claimed designation is associated exclusively with the applicant in the minds of ordinary consumers.
2. Appellations of Origin and Geographical Indications
From March to August 2024, Rospatent registered 15 geographical indications (GI) and one appellation of origin:
(Number in the Register of Geographical Indications and Appellations of Origin — Geographical indication/appellation of origin — Goods)
337 (GI) — MINERAL’NAYA VODA “DARASUN” — mineral drinking therapeutictable water
338 (GI) — SAKHSKIE GRYAZI — healing mud
339 (GI) — BRYANSKAYA MALINA — raspberry
340 (GI) — PODSOLNECHNOE MASLO STAVROPOL’YA — sunflower oil
341 (GI) — PEL’MENI “AMUR” — dumplings (culinary dish)
342 (GI) — TUVINSKIY EGIL (IGIL) — musical instrument
343 (GI) — RASSKAZOVSKIY TRIKOTAZH — knitted goods
344 (GI) — YAKUTSKIY KHOMUS — khomus (musical instrument)
345 (GI) — SERNURSKIY KOZIY SYR — semi-hard cheese
346 (GI) — TYUMENSKIY KOVYOR — carpets and carpet products
347 (GI) — BASHKIRSKAYA PUKHOVAYA SHAL’ (DEBЕТ SHAWL) — down shawl
348 (GI) — MELITOPOL’SKAYA CHERESHNYA — cherry
349 (GI) — MORDOVSKIY SIDR — traditional cider, fruit cider
350 (GI) — MSTERSKAYA VYSHIVKA — fabric products with embroidery of artisticdecorative and utilitarian purposes
351 (GI) — FITOCHAI KHAKASII — herbal teas, flower teas, herbal teas
352 (AOG) — UDMURTSKIE PEREPECHI — perepechi (pastries with filling)
Intellectual Property News of the Eurasian Economic Union and Neighboring Countries
1. Uzbekistan
Uzbekistan joins the Hague System for the International Registration of Industrial Designs
On June 5, 2024, the Law of the Republic of Uzbekistan № ZRU-929 “On the Accession of the Republic of Uzbekistan to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Geneva, July 2, 1999)” was signed.
Accession is carried out with a number of statements:
- the prescribed fee for the designation is replaced by an individual fee for the designation of the Republic of Uzbekistan;
- postponement of the publication of information about the industrial design is not provided;
- the requirement of unity of invention is applied to the designs included in one application;
- no entry in the international register regarding the change of the right holder shall be valid until the patent office of Uzbekistan receives documents on the transfer of rights;
- the term of protection is 5 years and may be repeatedly extended for five years, but not more than 15 years from the date of international registration;
- the time limit for the office to submit the application to WIPO will be 6 months instead of one month;
- the deadline for the office to prepare a notification of refusal to grant protection will be 12 months;
- the effect of international registration in Uzbekistan starts from the date of submission by the office to WIPO of a notification of the granting of protection.
The Geneva Act of the Hague Agreement will enter into force in respect of Uzbekistan three months after the deposit of the instrument of accession with the Director General of WIPO.
Uzbekistan joins the Singapore Treaty on the Law of Trademarks (STLT)
On August 13, the Law of the Republic of Uzbekistan № ZRU-941 “On the Ratification of the Singapore Treaty on the Law of Trademarks (Singapore, March 27, 2006)” was signed.
The following reservation was adopted along with the ratification:
“The Republic of Uzbekistan declares that, notwithstanding paragraph 2 of Article 19 STLT, it requires the registration of a license as a condition for granting the licensee, in accordance with the legislation of the Republic of Uzbekistan, any right to participate in proceedings in connection with the infringement of rights initiated on the initiative of the holder, or to obtain compensation through such proceedings for damage caused as a result of such infringement of the right to a sign that is the subject of the license.”
2. Turkmenistan
Turkmenistan joins the Eurasian system for the protection of industrial designs
On July 13, 2024, the Law of Turkmenistan “On Accession to the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention of September 9, 1994” was signed.
The Protocol will enter into force in respect of Turkmenistan three months after the deposit of the instrument of accession with the depositary (Director General of WIPO).
3. Georgia
Georgia improves trademark protection legislation
On March 8, 2024, amendments to the Law of Georgia “On Trademarks” entered into force, aimed at harmonizing Georgian legislation in the field of trademark protection with the relevant legislation of the European Union.
The corresponding Law of Georgia of 21.02.2024 № 4048-XIV “On Amendments to the Law “On Trademarks” was published on the website of the Georgian Patent Office.
4. Kazakhstan
The President of Kazakhstan signed a law on the ratification of the Protocol to TRIPS
On May 20, 2024, the Law of the Republic of Kazakhstan № 85-VIII ZRK “On the Ratification of the Protocol Amending the Agreement on Trade-Related Aspects of Intellectual Property Rights (Geneva, December 6, 2005)” was signed.
The application of the Protocol will allow Kazakhstan to issue compulsory licenses for the use of patented inventions for the purposes of producing and exporting medicines, as provided for in the additional Article 31bis of the TRIPS Agreement.
