“World Patent & Trademark News” - INTA 2012 - “Special Court on Intellectual Rights will be Created in Russia”
“World Patent & Trademark News” INTA 2012 published an article by the Head of Sojuzpatent’s Trademark Department Tatiana Petrova entitled“Special Court on Intellectual Rights will be Created in Russia.”
Special Court on Intellectual Rights will be Created in Russia
On December 7, 2011, a new Russian law (Federal Constitutional Law No. 4-FKZ) came into force. According to this law, a new, specialized court, the Court on Intellectual Rights (“IP Court”), was added to the Russian Arbitrazh court system. Russian Arbitrazh courts are state courts which consider disputes between legal entities. If a participant of a dispute is a physical person, such a dispute is subject to consideration by Regular courts.
Law 4-FKZ provides that the IP Court will be established no later than February 1, 2013, on the basis of Arbitrazh courts as a special court body to consider cases related to the protection of intellectual property rights. This is the first specialized state court to be established in Russia.
Furthermore, on the next day, December 8, 2011, another new law (Federal Law No. 422-FZ) was established and came into force. This law entered some amendments into other Russian laws in order to clarify some provisions of the above new law and to adjust provisions of Russian legislation to the new law.
At present and until the IP Court starts to operate, Arbitrazh and Regular courts adjudicate disputes concerning trademarks, patents, copyrights, and other IP rights. When the IP Court starts to work, IP cases which have been initiated in the other courts will not be transferred to this court. They will be completed by the court which initiated the relevant proceedings. However, the new cases related to IP, as well as appellations to decisions of courts on these issues, will be filed in the new IP Court.
The IP Court will have an authority to adjudicate the following cases as a court of first instance:
- Oppositions against regulations, directives, and other legal acts issued by federal official entities and related to intellectual property rights;
- Appellations to decisions of the Russian Trademark & Patent Office (ROSPATENT) related to the registration or cancellation of intellectual property rights excluding copyrights, neighbouring rights, and topology of integrated circuits; Appellations to decisions of the Federal Antimonopoly services which relate to unfair completion in obtaining intellectual property rights;
- Ascertainment of a patent holder;
- Cancellation of patents, utility models, industrial designs, trademarks, appellations of origin, and some other intellectual property rights; and Cancellation of trademarks on the basis of non use;
- As a cassation instance, the IP Court will be able to consider the following cases:
- Cases adjudicated by the IP court of a first instance;
- Cases adjudicated by Arbitrazh courts as courts of a first and appelation instance and related to intellectual property enforcement.
At present, cases related to intellectual property where physical person is involved should be considered by a Regular court. All other cases related to intellectual property are considered by Arbitrazh courts. The new IP Court will adjudicate all cases related to intellectual property with or without participation of physical persons However, some cases related to intellectual roperty hav been excluded from its jurisdiction; namely, disputes related to legal protection of copyrights, neighbouring rights, and topology of integrated circuits.
Furthermore, court procedures related to disputes on infringement of intellectual property rights in the first and appellation instance remain the same. It means that the infringement cases should still be brought to Arbitrazh or Regular courts. After consideration of these cases in the first and/or appellation instance, a cassation against decisions of Arbitrazh courts may be filed with the IP Court as a cassation instance court.
Decisions of the IP Court as a cassation instance court may be reconsidered by the High Arbitrazh Court of the Russian Federation.
The new laws bring a new participant into the court process-the expert (“specialist”). The task of the expert consists of simplification of the work of judges in cases when special knowledge is required for adjudication.The expert will be able to consult judges orally. After adoption of the new laws, any Arbitrazh court is now able to involve experts in the process, but only in the IP Court will the position of the expert (“specialist”) be brought to the court staffing table.
The IP Court, as stipulated by the new laws, should be established in the next year by February 1, 2013, but work of this court may begin later. The Supreme Arbitrazh Court Plenum should define the exact starting date of work and also the location of this court.
However, one important amendment of the law has already come into force. As of December 9, 2011, all non-use cancellation actions against trademarks must be submitted to the Moscow Arbitrazh court instead of the Russian Patent & Trademark Office as was stipulated by the previous law.Such an amendment made the process of non-use cancellation more time- and cost¬consuming; however, considering such cases in the court will give more procedural possibilities to both parties involved in the cancellation.
Generally, Russian lawyers and IP practitioners hope that the new special IP Court will help to resolve IP cases on a higher professional level, and it will bring more predictability and consistency to IP protection and enforcement in Russia.
Tatiana V. Petrova Sojuzpatent