Legal overviews
TOP 10 court decisions that will help protect your company’s interests in 2019
- Service: Intellectual Property (IP)
- Date: 15.01.2019
Right to a trademark
1. Decree No.8-P of the Russian Constitutional Court dated 13.02.2018
Liability for importing counterfeit goods and parallel import of original goods need to be differentiated. In particular, original goods should not be subject to destruction, and compensation for unlawful use of a trademark in the course of parallel import of original goods should be lower than that for import of counterfeit goods.
The possibility to protect a trademark holder’s rights depends on its good faith.
2. Decree No.28-P of the Russian Constitutional Court dated 03.07.2018
Registration of transfer of exclusive rights to a trademark and extension of the term of exclusive rights can be performed simultaneously if the applicant received exclusive rights to a trademark in the course of universal succession as a result of merger of another legal entity with it.
The exclusive rights pass to the successor from the time record is made in the Companies Register (EGRUL) on termination of activity of the legal entity being merged, and not when changes are made to the trademark register.
Russian law does not allow for partial alienation of exclusive rights to a trademark and joint ownership of a trademark by several entities, unless such trademark is a collective one.
If several entities being part of the same group use a designation in their activity, the fact of such use by any company should be taken into account when deciding the issue of the designation’s uniqueness for registration purposes of a trademark applied for by an entity being part of the group.
The Intellectual Property Court confirmed that registration of a toponym as trademark is possible.
According to a general rule, a geographic designation cannot be registered as a trademark; however, the Intellectual Property Court analyzed in detail the circumstances under which registration is possible.
6. Decision of the Intellectual Property Court dated 26.06.2018 on case No.SIP-601/2017
Restrictions on import as a result of which a rightholder is banned from importing goods to Russia is valid grounds for not using a trademark, since the rightholder is deprived of the right to import irrespective of its will. In such circumstances, the legal protection of a trademark cannot be terminated early.
Copyright and related rights
7. Decree No.S01-687/2018 of the Intellectual Property Court dated 20.09.2018 on case No/A40-8248/2017
The fact of violation of exclusive copyright by way of reworking a copyrighted object without the author’s consent needs to be proven by the plaintiff. The attributes of reworking need to be clear, obvious and unequivocal. Copyrighted objects being compared can bear certain resemblance; however, given substantial differences, making a conclusion on the works being dependent (one being a derivative of the other) is impossible.
8. Decree of the Intellectual Property Court dated 24.07.2018 on case No.A40-18827/2017
The administrator of a social network holds the exclusive right to the user database. Use of such database (including extraction and subsequent use of information from the database) without consent from the administrator of the social network being the title holder is not allowed.
9. Decree of the Intellectual Property Court dated 25.07.2018 on case No.A41-4299/2016
A movie theater or other organization arranging public showing of a movie must pay compensation to authors of the music works used in the relevant movie. Under the general rule, such compensation is to be paid to the collective rights management organization (RAO) even if the author of the music work is a foreign citizen.
Production secret
10. Decree No.S01-157/2018 of the Intellectual Property Court dated 10.04.2018 on case No.A40-74581/2017
In order for information to be recognized a production secret, introduction of a commercial secret regime is not necessary; it is sufficient to adopt other reasonable measures in order to maintain its confidentiality.*
* There is a decision in the practice of the Intellectual Property Court voicing the opposite position, see Decree No.S01-808/2018 of the Intellectual Property Court dated October 11, 2018 on case No.A56-53278/2017.
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Elena Berger Head of IP Practice
St. Petersburg Тel.: +7 (812) 346 79 90 |
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Vladislav Scherbatykh Associate
St. Petersburg Тel.: +7 (812) 346 79 90
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Additional notes
Should any questions arise in connection with the above or if you need any additional materials, please contact Elena Berger and Vladislav Scherbatykh Office of Capital Legal Services.
This Information letter keeps the clients of Capital Legal Services and other interested parties abreast of information that may, to any extent, affect their activity or cater to their particular interests. The opinions and commentaries expressed in this information letter shall not be deemed as legal opinions and do not cancel the need to obtain legal advice or legal opinion on separate issues.
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