Resolutions No. 16449/12 and No.15187/12 of the Presidium of the Supreme Commercial Arbitration Court dated 02.04.2013 are published on its website and contain a number of clarifications pertaining, in particular, to compensation to be applied as a sanction for violating intellectual property rights.

The Presidium of the Supreme Commercial Arbitration Court provided the following clarifications:

1.    The sanction stipulated by Subclause 2 Clause 4 Article 1515 of the Russian Civil Code for unlawful use of a trademark and imposed in form of compensation to be paid to the rightholder and equal to twice the value of goods where the trademark was used unlawfully, can be applied in the same way to calculating the compensation based on the cost of services/works which were performed with a trademark being used unlawfully.

2.    When considering sanctions to be applied in protecting intellectual property rights, the provisions of Article 401 of the Russian Civil Code should be followed, which indicate that such sanctions as compensation of losses and payment of a fee shall not be imposed on an entity breaching exclusive rights who has violated exclusive rights without fault.

3.    The Court may reduce the amount of compensation calculated according to Subclause 2 Clause 4 Article 1515 as twice the value of goods where a trademark was used unlawfully or twice the cost of the right to use a trademark, depending on the nature of the violation and taking into account that such compensation must be proportional to the consequences of the violation and must be determined based on the need to restore the financial position of the rightholder.

Also, the Resolutions contain an indication that effective court acts on cases with similar factual circumstances issued by commercial arbitrations courts may be reconsidered based upon new circumstances.

Resolution No.16449/12 of the Presidium of the Supreme Commercial Arbitration Court of the Russian Federation dated April 02, 2013

Resolution No.15187/12 of the Presidium of the Supreme Arbitration Court of the Russian Federation dated April 02, 2013

Additional notes

Should any questions arise in connection with the above or if you need any additional materials, please contact Anna Shmalyuk, St. Petersburg Office of Capital Legal Services.

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