Author: pat

Dear Colleagues, we are pleased to inform you that delegates from Patentica, Ms. Maria Nilova (Managing Partner), Mr. Vasiliy Bykov (Patent Attorney, Chemistry & Biology) and Ms. Julia Malinina (Patent Expert, Chemistry & Biology) will be attending the upcoming INTA 2022 Annual Meeting in Washington ВС, April 30 – May 4, 2022.
If you wish to arrange a meeting with Patentica representatives, please feel free to send us a letter at rsvp@patentica.com
See you in Washington DС!

Dear Colleagues, we are pleased to inform you that PATENTICA will be represented at the IPBS Europe 2022 in London, on March 29-30, 2022 by Maria Nilova, Russian and Eurasian Patent Attorney, Managing Partner.
If you wish to arrange a meeting with Patentica, please feel free to send us a letter at rsvp@patentica.com
See you in London!

Numerous claims in media that Russia’s response to sanctions will be encouraging infringement and backfire at companies from “unfriendly nations” in terms of IP protection are not accurate.

Global concerns are raised after an precedence decision was issued by the Arbitration court in Kirov on the lawsuit of One Entertainment UK Limited against a Russian entrepreneur over infringement of copyright to cartoon characters Peppa Pig and Daddy Pig, and trademark infringement with regards to IR № 1212958, № 1224441 (case No. A-28-11920/2021). The lawsuit was dismissed, because the judge considered it to be an abuse of rights, since the plaintiff is a legal entity from an “unfriendly” state. The decision, taken on 3 March 2022, can be appealed within a month in the Second Court of Appeals.

The judge referred to the Decree of the President of the Russian Federation “About application of special economic measures in connection with unfriendly actions of the United States of America and affiliated with them foreign states and international organizations” No. 79 of February 28, 2022.

This decision obviously was caused by misreading and misinterpretation of the mention decree, which does not stipulate or allows dismissing lawsuits initiated by entities from certain countries. Although such a court position is unprecedented, it was an initiative of a single judge, which will most likely be successfully appealed. It certainly does not demonstrate a common approach of the Russian arbitration courts and the Intellectual Property Court in particular or any official governmental position and cannot become a basis for similar decisions.

This ruling is considerably outweighed by recent decisions issued in favour of the very same One Entertainment UK Limited company over trademark and copyright infringement. For example, the following cases have been successful lately:

case А56-580/2022, decision of 15 March 2022: the court has ruled to collect compensation from the defendant (Russian individual entrepreneur) for infringement of copyright to cartoon characters Peppa Pig, Daddy Pig, Mummy Pig , George Pig and destroy counterfeited goods;

case А56-590/2022, decision of 15 March 2022: the court has ruled to collect compensation from the defendant (Russian individual entrepreneur) for infringement of copyright to cartoon characters Peppa Pig, Daddy Pig, Mummy Pig , George Pig and trademarks IR №1 212 958, № 1 224 440 and destroy counterfeited goods;

case А12-24261/2021, decision of 11 March 2022: the court has ruled to collect compensation from the defendant (Russian individual entrepreneur) for infringement of copyright to cartoon characters Peppa Pig, Daddy Pig, Mummy Pig , George Pig, Danny Dog, Rebecca Rabbit, Miss Sheep and trademarks IR 1212958, 1224441.

There is also a number of other favourable decisions in cases on trademark, copyright and industrial design infringements, where plaintiffs are entities from the countries that have been labelled as “unfriendly”, such the USA or South Korea:

case №А60-60028/2021, decision of 2 March 2022: the court has ruled to collect compensation from the defendant (Russian individual entrepreneur) for infringement of an industrial design No. 99993 owned by ENPRANY Co., Ltd. (South Korea) and bind him to stop the infringement by deleting information from marketplaces and civil circulation;

case А56-214/2022, decision of 15 March 2022: the court has ruled to collect compensation from the defendant (Russian individual entrepreneur) for infringement of trademark ROBOCAR POLI IR 1213307 and copyright to characters Robocar, Poli, Roy, Ember, Hally belonging to ROI VISUAL Co., Ltd. (South Korea) and destroy counterfeited goods;

case №А65-29944/2021, decision of 15 March 2022: the court has ruled to collect compensation from the defendant (Russian limited liability company) for infringement of copyright to character G-011 «CENTER STAGE» owned by MGA Entertainment Inc. (the USA) and destroy counterfeited goods;
case А50-31389/2021, decision of 15 March 2022: the court has ruled to collect compensation from the defendant (Russian individual entrepreneur) for infringement of trademark LOL No. 638367 owned by MGA Entertainment Inc. (the USA).

Court decisions that do not comply with the current legislation is a recurrent phenomenon in any jurisdiction, which is exactly why there exists the appeal system. A single erroneous decision does not demonstrate a tendency and cannot serve as a basis to jump to conclusions about the automatic cancellation of IP protection for companies outside of Russia. The Russian IP legislation is compliant with the international conventions and agreements, which is why it is necessary to keep monitoring and defending one’s rights.

Espanika is the popular online school of the Spanish language. It has been created by the Russian enthusiastic teachers who love Spain and are keen to share their broad knowledge of the Spanish culture.

The co-Founder and the Owner of Espanika School asked Patentica for assistance. Due to the corporate issues, he found himself in a situation where his former colleague as the administrator of their original domain continued to use this website without his consent. Moreover, this website started promoting Spanish lessons arranged by the colleague, confusing all the students.

Finally, using the fact that the word “Espanika” has been registered as a trademark, Patentica’s lawyers managed to nullify the opponent’s domain. The most difficult part of the case was related to the fact that the defendant’s domain rights appeared earlier than Patentica’s client trademark was registered. This collision forced the IP Court to investigate the actual contribution of each party in the website creation and their true interest in the use of the domain.

Patentica’s attorneys were deeply engaged in the court case and did their best to protect the client’s rights. In the end, this domain dispute was resolved in the favor of the Owner of Espanika School and his trademark.

On March 09, 2022, the Moscow Arbitration Court satisfied the claim of Zentiva Pharma against Farmatun-1, Dinamika and MC Dinamika for the protection of patent rights in relation to Dolphin nasal washing device (utility model No.151,829). The Defendants were forbidden to sell, offer for sale and store for these purposes their medical product “Duolor”.
Until 2018, Defendants were engaged in the production of devices and nasal washing products under the brand name “Dolphin” for Zentiva Pharma. After the transfer of production, they released under their brand a product “Duolor” similar to “Dolphin”.
Defendants insisted that their device is manufactured according the utility model No 196,933 and does not contain “a dispenser having an axial channel” described in Zentiva’s patent. But this argument was refuted by the patent examination. Further, the Сourt noted that the Defendants’ reference to the later utility model No. 196933 does not influence on the consideration of this dispute regarding infringement of the Zentiva’s patent.
Thus, the Court found that the Defendants’ product “Duolor” contains every feature of the plaintiff’s utility model, and a permission of the patent owner for production and sale has not been obtained. The Court satisfied the claim and recovered from the defendants the costs of the examination.

The Decree of the Government of the Russian Federation  No. 299 “On Amending item 2 of the Methodology of calculating amount of compensation payable to patent owner as a result of decision to use invention, utility model or industrial design without patent owner’s consent, and procedure of its payment” was issued on 6 March 2022.

It introduces a special protocol for calculating compensation for a use of a patent authorized by the Government under Article 1360 of the Civil Code. Article 1360 of the Civil Code implies that for the purposes of national security, human life and wellbeing, the Russian Government may authorize a certain entity to use an invention under patent along with paying appropriate compensation to a patent owner. Now the decree specifies that if the patent owner is an entity/national from a list of “unfriendly countries”* there will be no compensation for such use.

Although it is not directly stipulated in Article 1360 of the Civil Code, such authorization by the Government is actually meant to be issued in a form of a special permission, which resembles a “compulsory license” in a commonly recognized international IP law practice.

Since the codification of the Russian civil law in 2008 before the adoption of  the decree in question, the compensation for such a “compulsory license” had been 0.5% of a profit obtained from such use, while only two “compulsory licenses” having been granted so far in pharma sector. Both were issued on the same patents relating to Remdisivir, which is an anti-COVID medicament.

It would be worth mentioning that according to the current legal practice, each request for such a “compulsory license” under Article 1360 of the Civil Code is supposed to be and will be considered carefully and individually on a case to case basis by the Government.

Therefore, this decree should not be understood to allow free unauthorized use of any patents by Russian companies. It does not imply patent infringement, theft of IP, etc., as many newspaper articles suggest either.

Should you require more detailed info and guidance  feel free to contact us at info@patentica.com.

* Australia, Albania, Andorra, Great Britain (including the Island of Jersey and controlled Overseas territories – Anguilla, British Virgin Islands, Gibraltar), all Member States of the European Union, Iceland, Canada, Liechtenstein, Micronesia, Monaco, New Zealand, Norway, Republic of Korea, San Marino, Northern Macedonia, Singapore, United States of America, Taiwan (ROC), Ukraine, Montenegro, Switzerland and Japan

On December 16, 2021, the State Duma adopted the Law on the accession of the Russian Federation to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications.

While the Agreement was originally introduced in 1958 and entered into force in 1966, only 30 member countries have joined it so far. Through these years the Agreement have undergone several revisions, the last one being Geneva Act of 2015, allowing for registration of geographic designations’ and participation of intergovernmental organizations.

It is hoped and expected that the Russian membership in the Lisbon Agreement shall advance the protection of regional brands supporting further development of local and foreign manufacturers, as well as strengthen the Russian integration within the global IP system.

We at PATENTICA will be happy to answer any further questions you may have on this or other news and insights published on our website. Please feel free to contact us for more details at info@patentica.com

Epoch Company is widely known as toy manufacturer from Japan. The famous “Sylvanian Families” toy characters are beloved, recognized and sold all over the world. No surprise that more and more rivals produce and sell similar toys.

In many parts of the world the huge popularity of “Sylvanian Families” invoked the production and sale of counterfeit goods by mala fide competitors. Similarly, several years ago, counterfeit toys produced in China and the USA appeared in the Russian market.

Recently, Epoch Company won one of the most long lasting and complex cases. After almost five years of legal proceedings, thanks to the excellent litigation work and professional perseverance of Patentica’s lawyers, the Supreme Court of Russia was convinced to secure Epoch’s victory in this litigation. Patentica protected Epoch’s interests via claiming compensations for the infringements of its exclusive rights on toys’ designs.

Many complicated questions became subjects of robust discussions in the court. For example, the plaintiff was forced to prove the originality of toys’ designs in comparison with “Maple Town” anime series characters. Besides, the defendants tried to protect themselves with the help of patents of the People’s Republic of China for industrial designs.

Patentica confirmed both originality and the very fact of creative work to be the background for the copyright protection causation for Epoch and its “Sylvanian Families”. Finally, Epoch won the case and all three defendants were obliged to pay compensation.

On November 22, 2021, the Eurasian Patent Office (EAPO) and World Intellectual Property Organization (WIPO) signed the agreement according to which the EAPO can act as the International Searching Authority (ISA) and the International Preliminary Examining Authority (IPEA) under the PCT. The agreement will enter into force at a later date after completing necessary formality preparations by the patent office.

On October 18, 2021, the Government of the Russian Federation approved the methodology developed by the Federal Antimonopoly Service for calculating the amount of compensation payable to a Russian patent owner for producing generic medicines intended for export to other countries in accordance with the Article 1360.1 of the Civil Code without the patent owner’s consent. The corresponding government decree No 1767 entered into force on October 28, 2021.

According to Article 1360.1 of the Civil Code the Russian Government may allow to use a patented invention for the production of a medicinal product by any party for export purposes under certain specific circumstances without the consent of the patent owner with the requirement of immediate notification of the patent owner and payment of the proportionate compensation for such a use, as we informed earlier here.

The amount of compensation is 0.5% of the manufacturer’s actual revenue, which has exercised the right to use an invention, utility model or industrial design without the consent of the patent owner. The compensation is supposed to be annually paid during the period of validity of the corresponding government decision.

To date, no such authorization has been issued. We will follow up on the development of practice on this matter.

Should you have any questions in this regard or need additional information please do not hesitate to contact PATENTICA’s patent attorneys at  info@patentica.com.

In the brand new issue of The Patent Lawyer Magazine: An overview of the Eurasian design patent system. Vasily Andreev and Victor Lisovenko, Attorneys at PATENTICA, summarise the filing, examination, and opposition stages of the Eurasian design patent system.

Read the full article here for free: https://lnkd.in/dpYYCYca