IP litigation, dispute resolution in Russia

Apart from disputes related to

• patent enforcement,
• patent validity,
• trademark infringement,
• trademark invalidation,
• trademark revocation, and
• unfair competition,

we offer our clients assistance in other Litigation cases associated with intellectual property.

Such disputes in Russia and neighboring countries may include the following areas.

Copyright

Enforcement of copyright makes up an important part of our IP dispute resolution practice.

In some cases, copyright, as a trans-border non-registered right requiring neither registration nor depositing, may be a good alternative to trademark/industrial design rights.

In case a rights holder does not have a registered right in Russia for their artistic creation (a particular design, a logo artwork, a cartoon character, etc.), they still can claim infringement of their copyright. If they are able to present strong evidence confirming their priority in creating the object in question, they may have a good case in a Russian court against an infringer.

That said, a copyright infringement dispute may prove somewhat more difficult than, for example, a trademark-related proceeding, because for a registered trademark, the priority is presumed and based on the registration, whereas a copyright holder’s priority may have to be proven during the litigation. In addition, it may be necessary to prove the artistic character of the object.

Domain names

Domain names, under Russian law, are not regarded as a separate IP right. At the same time, most disputes connected with domain names relate to infringement of IP rights: trademarks, company names, trade names, etc. On many occasions, domain names are registered for abusive or speculative purposes.

In all such disputes, the injured party has to find the best way to bring the infringer to justice.

If the domain name is registered in one of the following generic Top-Level Domains (gTLDs)—.com, .info, .net, .org, .biz, .name, .pro, .aero, .asia, .cat, .coop, .jobs, .mobi, .museum, .tel, .travel or in a new gTLD—your dispute may be resolved out of court on the basis of the Uniform Domain-Name Dispute Resolution Policy (UDRP).

However, UDRP or similar dispute resolution proceedings are not currently available for .ru domains. In such cases, if a settlement is out of the question, there is no way around litigation in court.

Know-how (commercial secrets)

Know-how litigation in Russia may relate, inter alia, to the theft or unauthorized disclosure of a commercial secret or to execution of sale or licensing agreements.

Because of the special character of the exclusive right to know-how (a disclosure means the termination of the right), the rights owner cannot oblige other persons to keep commercial secrets after a disclosure has taken place. That is why lawsuits against persons responsible for a disclosure only make sense if the claimant seeks remedies from the infringer. In many cases, such proceedings are difficult for the claimant. To succeed in a case related to a theft or unlawful disclosure of trade secrets, they have to prove at least the following:

• the fact that the information at issue qualified as know-how at the time of the purported theft or disclosure (was not publicly known and was protected by the claimant with reasonable measures);
• the fact of the theft or the transmission of the information to the defendant and its subsequent disclosure;
• the amount of damages caused to the claimant.

In practice, strong measures aimed at setting the proper regime of trade secrets protection are important for keeping secrets and the respective IP rights intact and facilitating eventual court cases.

Other litigation cases

Sojuzpatent is ready to help clients in litigation related to other intellectual property rights.

In particular, this may include disputes concerning any means of individualization apart from trademarks:

• appellations of origin,
• geographical indications,
• trade names (business names), and
• company names.

Computer program protection is based on the IP law sections related to copyright but still has its own specific features.

Sojuzpatent has broad experience in IP litigation and dispute resolution in Russia and neighboring countries. In many cases, we help our clients to avoid costly litigation and to reach a favorable settlement.

Featured specialist

Mr. Maxim V. Mikhailov

Head of Legal Department

Get expert advice+7 (495) 221-8880

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