Category: Patents

In May 2021 a Latvian company SIA Salmo filed a lawsuit with Bashkortostan Commercial Court against a sole entrepreneur Alesia Mitrofanova, requesting a compensation of 50 thousand rubles for infringement of its Cobra trademark, protected in Russia by virtue of international registration 771365 (in classes 22 and 28 of the Nice classification). As followed from the lawsuit, the defendant engaged in sales of counterfeit fishing wires, which fact was evidenced by a private controlled purchase, recorded on video and also by bill of purchase, listing the item sold and providing information on the seller. First instance court allowed all the evidence presented by the claimant and on 18 October announced its decision, awarding the requested compensation in full, as no objection was raised by the defendant concerning the amount thereof. This decision was supported by the 18th court of appeals in January 2022, despite the defendant’s arguments on procedural violations.

In March 2022 Ms. Mitrofanova filed a cassation plea with the Intellectual property Court, arguing, among other, that the claimant is incorporated in Latvia, which country is listed among unfriendly states in the Decree of the Russian Government No 430-r, and its actions constitute misuse of exclusive right, as the fishing wire is not listed in the trademark registration. The panel of judges, however, disagreed with the defendant, pointing out that the fishing wire is uniform with other goods in 28th class. Also the claimant’s actions to defend its exclusive right could not be regarded as misuse of this right and justify the infringement in question. No retorsion measures against Latvian companies were introduced in Russian legislation yet – and even if they were, they could not be applied retrospectively.

Therefore, the cassation court supported the acts of both first instance and appeal courts, dismissing the cassation plea. The second cassation plea, filed to the Supreme court of Russia, was returned on 13 September due to non-payment of court fees.

https://kad.arbitr.ru/Card/15a1097a-0d87-4431-96d9-1140fcfc4127

Amendments to the Russian Civil code in parts relevant to international protection of intellectual property assets is currently discussed in State Duma. The bill intends to clarify certain procedures for granting a protection in Russia for inventions, designs, geographic designations and designation of origin. Recently Russia joined both the Hague agreement and the Lisbon agreement in their latest revisions, but to this day there was no laws or bylaws explaining how to effect these regulations on a national level.

It is expected that the law shall allow publication of international invention and design applications within 18 months from the date of filing (on par with national applications) and expressly extend national patentability criteria to their expertise. Rules for approving or refusing protection to geographic designations and designation of origin, as well as protection periods are also proposed. The law is supposed to come into force till the end of this year, but it is not very likely to be approved that soon; much less are the necessary bylaws and regulations for RU PTO. For geographic designations and designation of origin, though, the Government has already approved the expertise, grant and prolongation fees, which are 10800, 16000 and 20000 rubles accordingly.

http://council.gov.ru/activity/legislation/members_initiatives/49359/

Recent amendments into the Russian Civil Code, introduced by Federal Law No.143-FZ are aimed to prevent registration as trademarks any designations, which could be confused with places of manufacture. Previously only a confusion with a manufacturer itself was a ground for refusal.

Furthermore, the law puts a ban to register as trademarks designations which include, copy or imitate geographic designations (which have been introduced in Russia just 3 years ago) or protected designations of origin, or applications thereof, if these were registered or filed before priority date. Exclusions are made for applicants that own the right to use a corresponding geographic designation or designation of origin.

Another limitation concerns designations including, copying or imitating geographic designations or protected designations of origin if the use of a registered trademark could possibly result in associating with above designation(s) and negatively affecting their user(s). Respectively, Article 1537 of the Code bans circulation of goods illegally labeled by designations, including, copying or imitating geographic designations or designations of origin.

Amendments shall come into force on 29 May 2023.
http://publication.pravo.gov.ru/Document/View/0001202205280007

We are extremely proud that our attorneys, Eduard Shablin, Vadim Chagin and Olga Gribanova have been listed among leading trademark, patent and copyright practitioners.
World IP Review has recently released a new guide of the top IP lawyers – WIPR Leaders 2022. The nomination period lasted four months, during which the research team selected over 1,700 best lawyers in the field out of 12,000 nominees.
For choosing this year’s leaders, WIPR studied candidates’ practice history, notable cases, level of expertise and extra activities in the field, such as published articles and educational initiatives, and Patentica’s nominees have lived up to these standards.
Patentica’s dedication to clients, high rate of successful cases and professionalism have been rewarded by positive assessment from WIPR.
You can see the new rating at:
https://newtonmedia.foleon.com/wipr-le…22/russia/

On 5 May 2022 the Department of Treasury of the U.S.A. published General License No. 31 “Authorizing Certain Transactions Related to Patents, Trademarks, and Copyrights”, which refers to the previously adopted sanctions under Directive 4 under Executive Order 14024 “Prohibitions Related to Transactions Involving the Central Bank of the Russian Federation, the National Wealth Fund of the Russian Federation, and the Ministry of Finance of the Russian Federation,” 28 Feb. 2022

In particular, License No. 31 makes an exception for transactions made in connection with patents, trademarks, copyright and other form of intellectual property. As for now, the following transactions are authorized:

1. 1. The filing and prosecution of any application to obtain a patent, trademark, copyright, or other form of intellectual property protection;
2. 2. The receipt of a patent, trademark, copyright, or other form of intellectual property protection;
3. 3. The renewal or maintenance of a patent, trademark, copyright, or other form of intellectual property protection; and
4. 4. The filing and prosecution of any opposition or infringement proceeding with respect to a patent, trademark, copyright, or other form of intellectual property protection, or the entrance of a defense to any such proceeding.

The reconsideration of the previously imposed sanctions by the U.S. Government is beneficial to all of the U.S. owners of Russian intellectual property assets facilitating payments to enable the U.S. applicants and owners to file, prosecute, register and maintain their patent, trademark and design rights in Russia.
The full version of the License is available at: https://home.treasury.gov/system/files/126/russia_gl31.pdf

In general, the Russian and Eurasian patent offices operate as usual providing patent and trademark registration services to all of the foreign applicants – irrespective of their origin and presence in the Russian market.

As always, we are keeping a close eye on all of the ongoing law updates and amendments and would be happy to provide any legal assistance and advice on the intellectual property matters to our clients from all over the world.

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