Hello. Today we will discuss civil litigation in Russia.
Let's start with a basic question,
who may bring actions for trademark protection and trademark infringement in Russia?
Who may be claimant in the case?
First of all, this is the owner of a trademark.
This is natural because here
the right holder is the owner of a trademark and this person is,
of course, entitled to bring actions for
protection and for infringement of trademark rights.
Secondly, these are licensees that obtained exclusive trademark rights from
the trademark owner in case these exactly rights are violated by the third parties.
In this case, we see that the trademark owner transfers
its or a part of its exclusive rights to licensees,
and in this case licensees are also entitled to
bring actions and to protect of their exclusive rights.
And another question is,
whether nonexclusive licensees enjoy
such right to bring actions for protection and infringement.
And the answer to this question is in
Article 1254 of the Russian civil code and is the negative one.
Under the Russian legislation,
nonexclusive licensees do not obtain any exclusive rights
and are not entitled to bring actions for protection of trademark rights.
So, basically, only two kind of persons are entitled to do that.
That's the owner of trademark rights and
licensees that obtained exclusive trademark rights.
Another question is, who can be sued for trademark infringement?
Basically, we may answer this question that every person infringing
trademark rights can be sued by the trademark owner or exclusive rights licensee.
It can be a producer of counterfeited goods,
seller or re-seller of counterfeit goods,
even we may say that the same rule would apply to administrator of
a domain name containing trademark right and violating trademark,
owner of a website advertising counterfeited goods,
unauthorized dealer using trademark without permission and creating
an impression that there is a commercial connection with a trademark proprietor,
and so on and so forth.
So, the list of these people is very extensive,
so everyone who is infringing trademark rights.
Now let's turn to discussion of provisional measures under the Russian law.
Provisional measures are available to
the trademark owner and they are prescribed by Chapter 8,
Articles 90 to Article 100 of the Commercial Procedure Code of the Russian Federation.
And these provisions say that
Russian Commercial Courts have authority to order prompt and effective
provisional measures to prevent infringement of trademark rights
and to preserve relevant evidence in regard to the alleged infringement.
And such provisional measures may include arrest of goods,
orders to secure evidence,
which is of course very relevant in case of violation of trademark in Internet,
this may also be injunction against the defendant or
other person prohibiting these persons to perform certain acts,
placement on the defendant of the duty to perform
certain actions for the purpose of preventing damage and so forth and etcetera.
So, this list of provisional measures that the right holder
may ask the court to apply in his or her case is not exhaustive.
So, you may ask whatever you see most effective
and most efficient in context of each case.
And these provisions of the Commercial Procedure Code also mention
that such measures are allowed at any stage of litigation,
at the court of first instance,
at the Court of Appeal,
Cassation Court and even the Supreme Court is entitled to take
this provisional measures to prevent damage or infringement of trademark rights.
And most interesting is that these measures are
allowed even prior to filing a claim and without hearing the other party.
So, this is a very special case that is directly
mentioned in Article 99 of the Commercial Procedure Code.
And in this case,
the court may apply preliminary provisional measures In
case applicant is able to demonstrate that any delay in taking,
in ordering these provisional measures may cause
irreparable harm to trademark protection to his or her business.
And to give an example,
I may mention of importation of counterfeited goods after customs clearance.
In this case, as soon as the right holder came to know about
this intention or the infringer to release these goods and to enter the Russian market,
of course, he need to be very quick in taking this preliminary measures.
And he would simply would have no time to prepare a claim for substance.
He would need to freeze these goods and then to sue the infringer.
And this is the case when this preliminary provisional measures can be rather effective.
And what is special about
this preliminary provisional measures is that
the court may require the applicant to submit a counter indemnity,
or what we may call security guarantee,
an amount of property interest to be secured in order to protect the defendant.
Because if these measures are found subsequently unjustified,
the defendant would be able to recover damages from the security or guarantee.
And this can be a sum of money that applicant may deposit on
the bank account of the court or
a bank guarantee that would also cover potential damages of the defendant.
And the second special feature of
this preliminary provisional measures is that the court will always fix a term,
after 15 days, for the applicant for
filing a statement of a claim on substance of the dispute.
So within this time,
the applicant would have to bring a case in the court on substance,
not only for asking the court for a preliminary provisional measures, but on substance.
If the applicant fails to do that,
their preliminary provisional measures would automatically expire.
So this is how provisional measures under the Russian procedural law look like.
And now let's discuss a competent court and
initiation of proceedings for protection of trademark rights.
Under the general rule prescribed by
Article 35 of the Russian code of commercial procedure,
an infringement claim is filed with the commercial code of
the subject of the Russian Federation at the location or let say,
registration or place of residence of the defendant.
So this is simple. You would have to find out where the defendant has registered,
its company or where
its residence or which city or which subject of the Russian Federation,
and then sued the defendant in that court.
The only exception in
the Russian legislation concerns cases
that are connected with revocation of trademarks for known use.
And these cases are brought directly to
the intellectual property court as we already found out.
Within the Russian Federation,
that's the only competent court for hearing such cases.
Let me also mention one very important provision in
the Russian law in Article 4 of the Russian code of commercial procedure.
And there is, we may say a precondition to
initiate every proceeding concerning trademark protection.
In this Article 4 of the commercial procedure court,
establishes a special pre-trial settlement,
a procedure that entered into force since 2016.
Under this provision, the dispute may be referred to the court only after expiration
of 30 calendar days from the date of notice sent by the claimant to the defendant.
It means that the claimant has to inform the defendant about its intention to
sue and give a chance to the parties to negotiate and settle the case out of court.
So that's the rationale of this new rule under the Russian commercial procedure code.
And this is sort of again,
I would say preconditions to be applied to the court.
And of the rest of procedural issues in litigation are regulated
in very much detail by a relevant provisions of their commercial code procedure.
And there are many important issues such
as what documents should be presented by the parties,
what are the content of these documents should be,
what are the court fees,
and so on and so forth.
Let me concentrate perhaps only on
the most important issues that are connected with trademark litigation.
Let's discuss first of all, burden of proof.
And this rule is contained in Article 65 of the code of commercial procedure.
And this article states that each person participating in the case is obliged to
provide the circumstances it uses as grounds for its claims and objections.
So, each party who wants to persuade the court would have to present its own evidence.
And the standard of proof here is,
I would say, balance of probabilities.
And in order to do that,
parties may use a different expert witness opinions,
result of opinion polls,
and so on and so forth.
So this is quite popular, I may say.
However, in a trademark infringement cases,
a judge may put himself or herself in the place of
the average consumer and assess likelihood of confusion over all the conflicting marks.
And this is pretty common rule.
And Russian judges are of course entitled
to reach a conclusion placing themselves on a place of average kind of consumers.
Let's also mention a very specific feature of
the Russian litigation that concerns mandatory time limits.
And this time limit for a court of first instance is
prescribed by Article 152 of the code of commercial procedure.
And this article says,
that the case must be decided by a court of
the first instance within a term of no more than three months,
including the time for preparation on the case for
hearing and for the delivery of a judgment,
unless otherwise established by this court.
And this is of course a very tough task for
Russian judges to render judgments within such a short period of time.
And the same rule would apply to a Court of Appeal and Cassation,
although the time limit would be even smaller.
They are given only two months to decide on the case on appeal or on cassation.
This is unusual.
And I would say that this mandatory time limits exist not in every country.
And I would say that's an exception rather than a rule.
But this is a very special feature that makes Russian court system rather
effective in dealing with trademark and other appeal cases.
And let me get back to appeals again.
After the court of first instance surrendered their judgment,
appeal may be launched to give
the appeals court that's responsible for issues of facts and law
subsequently to the intellectual property court
that acts as a court of cassation and the court of law only,
and then to the Supreme Court,
and to the Presidium of the Supreme Court.
So, basically, you have a chance to appeal four times,
which is also a rather unusual situation.
But this is how the Russian state of remedy look like.
Now, let's discuss a distribution of court expenses.
And this is again a rule or a code of commercial procedure, Article 110,
which prescribes that costs are placed on the loosing party or loosing parties.
This may also be the case when there are several defendants.
So, each winning party,
applicant or defendant, may recover expenses from the losing one.
And when I say expenses,
I mean only at reasonable expenses,
expenses that are directly connected with other litigation concerning trademark.
And if a claim is partially satisfied by the court,
the costs are placed in proportion to the amount of satisfied claims.
So, basically, this is a law on distribution.
