n this browser, the site may not be displayed correctly. We recommend that You install a more modern browser.

Chrome Safari Firefox Opera IE  
GORODISSKY & PARTNERS
INTELLECTUAL PROPERTY
& TMT LAW
pat@gorodissky.ru Ru En Jp Cn
www.gorodissky.ru
����
x
 
print version

Quarterly Review of News in Legislation, Court Practice and Rospatent's Practice Related to Intellectual Property (April to June 2020)

13 December 2020

Contents

Laws and Draft Laws

Government Enactments and Departmental Enactments

International Treaties of the Russian Federation

Court Practice

EAPO's Practice

Rospatent's Practice

Laws and Draft Laws

Measures aimed at supporting people and ensuring sustainability of the Russian economy

On 8 June 2020, Federal Law No. 166-FZ dated 08 June 2020 “On Amending Legislative Acts of the Russian Federation aimed at Taking Urgent Measures to Ensure Sustainable Economic Development and Preventing Consequences of the Spread of the New Coronavirus Infection” was published and entered into force.

Article 23 of the law allows the Government to extend the time limit for the applicant, right holder, and other persons to take actions, including those related to payment of patent and other fees required for Rospatent to take legally binding actions provided for by Clause 3 of Article 1246 of the Civil Code and related to legal protection of results of intellectual property and means of individualization.

Outsourcing patent search and patent examination, and starting point of a time limit for request for examination

On 10 June 2020, the State Duma passed in the first reading a federal draft law On Amendments to the Civil Code (No. 873108-7).

The draft stipulates creation of conditions for preliminary information search and evaluation of patentability of a claimed technical solution by the Russian scientific and educational organizations accredited by Rospatent. This service will be offered to applicants at their discretion. The cost of the service will be determined by the organizations in their agreements with the applicants.

The draft law also stipulates that in case of an international application, a three-year time limit for submitting a request for substantive examination of the application counts from the date of entry of the international application into the national phase at Rospatent or, with regard to an Eurasian application, from the date of transformation of the Eurasian application into Russian national application. Currently, the law stipulates the date of international submitting and the date of submitting the Eurasian application, accordingly, as a starting point of the three-year time limit.

Governmental Enactments and Departmental Enactments

The Government allowed applicants, right holders, and third parties to extend a time limit related to legal protection of results of intellectual activity and means of individualization

On 22 June 2020, Decree of the Government No. 893 aimed at creating more favourable conditions for interactions with Rospatent during the spread of the coronavirus infection, entered into force.

In accordance with the adopted decree, if the end of the time limit for the applicant, right holder, or any other person to take any actions before Rospatent (to submit various documents, additional materials to applications, requests, applications, objections, etc.) falls on the period from 30 March to 30 November 2020, this time limit may be extended until 31 December 2020 upon request of these persons. The possibility to extend the time limit is stipulated, among other things, for actions related to payment of patent fees.

A request for an extension of the time limit may be filed within one month from the end of the time limit to be extended or from the effective date of the adopted decree, whichever is later. No fee is stipulated for submitting such a request.

Due to entry into force of the law introducing protection of geographical indications, the Government enacted decree No. 822 dated 4 June 2020, amending the Regulations on Patent and Other Fees

Thereby, the following fees were set: for filing of an application for a geographical indication (2,700 rubles) and its examination (10,800 rubles); for registration of a geographical indication or right to use the same (16,000 rubles); for issue of a certificate of a right to use the registered geographical indication (2,000 rubles); for transformation of an application for an appellation of origin into an application for a geographical indication and vice versa (3,000 rubles) or for transformation of an appellation of origin into a geographical indication and vice versa (9,000 rubles); for an extension of the validity period of the right to use a geographical indication for 10 years (20,000 rubles); for consideration of an objection to a decision refusing to register a geographical indication (9,000 rubles) or an objection to registration and (or) granting of the right to use the registered geographical indication (14,000 rubles); for consideration of an application for deregistration of the geographical indication and (or) the validity of the right to use the same (8,000 rubles), etc.

International Treaties of the Russian Federation

On 19 May Azerbaijan and on 20 May Armenia ratified the Protocol on Protection of Industrial Designs to the Eurasian Patent Convention adopted on 9 September 2019 at a diplomatic conference in Nur-Sultan, Republic of Kazakhstan.

The Russian Federation is among the countries that signed the Protocol.

The Protocol will enter into force for the first three states that ratified it or acceded to it three months after the third state deposits an instrument of ratification or an instrument of accession to the depository, being the Director General of the World Intellectual Property Organization.

Court Practice

1. Copyright law

When lodging a claim for recovery of compensation for the infringement of the exclusive right, it is the claimant who should state the right to which intellectual property subject matter he considers as infringed. The competence of the court considering the case includes determination whether this right belongs to the claimant and whether it was infringed by the defendant (Constitutional Court, ruling No. 1345-O dated 18 June 2020)

The 15th Commercial Court of Appeal suspended the proceedings on case A32-48015/2018 due to submission of a request to the Constitutional Court under Article 125 (Part 4) of the Constitution.

At the same time, the 15th Commercial Court of Appeal challenges the constitutional nature of the following provisions of the Civil Code:

  • Clause 1 of Article 1259 setting forth, in particular, that copyright-protected subject matters are scientific, literary, and artistic works, regardless of the merits and purpose of the works as well as its style, including audiovisual works, paintings, sculptures, graphic works, design works, graphic stories, comic books, and any other works of visual arts;
  • Clause 7 of the same Article, in accordance with which the copyright covers part of the work, its title, or character, if, by their nature, they may be recognized as an independent result of the author’s creative work and meet the requirements provided for by Clause 3 of that Article;
  • Clause 1263 on audiovisual work.

As stated by the 15th Commercial Court of Appeal, Clauses 1 and 7 of Article 1259 and Article 1263 of the Civil Code contradict Article 19 (Part 1) of the Constitution, since they make it possible to grant legal protection to the images (pictures) of characters originally created as part of an audiovisual work as to independent works of visual arts.

The 15th Commercial Court of Appeal points out as follows: if a claim to protect exclusive rights to the characters as part of an audiovisual work is lodged, the defendant’s actions are regarded as one infringement and, at the same time, in cases upon claims for protection of exclusive rights to the images of the characters (pictures), the courts proceed from the fact that one action of the defendant infringes the exclusive rights to several copyright-protected subject matters; it evidences that there is contradictory law enforcement practice in the relevant disputes. The complainant also believes that granting of judicial protection of the infringed right should not be determined by the substance of the claim, but by the nature of the offence, and considers that, when classifying the copyright-protected subject matter, the will of the author when creating a particular subject matter should be prioritized. From the point of view of the 15th Commercial Court of Appeal, providing the right holder with an opportunity to assert claims to protect the exclusive rights to both, audiovisual works and works of visual arts means that he may recover double compensation for the infringement of the exclusive rights.

The Constitutional Court indicated that each author of the work included in an audiovisual work as its integral part, both existing earlier (the author of the work taken as a basis of script, etc.) and created during the work on it (camera director, artistic director, etc.), retains the exclusive right to his work, except where this exclusive right was transferred or passed to the manufacturer or other persons for other grounds stipulated by law.

Therefore, the acquisition by one person of the exclusive rights to the audiovisual work and the works included therein has no effect on the legal protection of the relevant intellectual property subject matters and the possibility to dispose of the exclusive rights thereto in the future.

When lodging a claim for recovery of compensation for the infringement of the exclusive right, it is the claimant who should state the right to which intellectual property subject matter he considers as infringed. The competence of the court considering the case includes determination whether this right belongs to the claimant and whether it was infringed by the defendant.

The specific features of intellectual property subject matters are of such a nature that one action may infringe the exclusive rights to several results of intellectual activity or means of individualization. Such an infringement may consist in several intellectual property subject matters being expressed in one tangible medium.

In case of infringement by one action of the exclusive rights to several intellectual property subject matters belonging to one right holder, the court may decrease the compensation for this infringement. Taking into account position of the Constitutional Court No. 28-P dated 13 December 2016, the compensation amount may be set by the court below the minimum limit established by law as well.

2. Protection of copyright and rights to trademarks

Compensation may be set below the minimum limits established by law in exceptional cases only (taking into account the provision of §3 of Clause 3 of Article 1252 of the Civil Code and the legal position contained in resolution No. 28-P dated 13 December 2016 as well as the explanations given in Resolution No. 10), provided that the defendant asserts that it is necessary to apply the relevant procedure for decreasing compensation (IP Court, Resolution dated 29 April 2020 on case No. А12-27805/2019)

Aeroplan CJSC filed with the Commercial Court of Volgograd Region a statement of claim against individual entrepreneur N. for recovery of compensation for infringement of the rights to the trademark under certificates of the Russian Federation Nos. 314615, 502206, 502205, 530684, 489246, 489244, 475236, 495105, 536394, 539928, 525023, and 525959 and to the copyright-protected subject matters being images of characters Masya, Papus, Nolik, Simka, Dedus, DimDimych, Kusachka, Fayer, Igrek, Verta, and Zhuchka in the amount of 230,000 rubles (10,000 rubles for infringement of the rights to each subject matter), expenses on purchase of the disputed product in the amount of 179 rubles, postage charges in the amount of 94 rubles, expenses on obtainment of an extract from the Unified State Register of Individual Entrepreneurs in the amount of 200 rubles, and expenses on state duty payment in the amount of 2,000 rubles.

By decision of the Commercial Court of Volgograd Region dated 14 October 2019 and the decision of the 12th Commercial Court of Appeal dated 17 December 2019, the compensation for the infringement of the rights to the trademarks and copyright-protected subject matters in the amount of 230,000 rubles, 2,000 rubles as the expenses on state duty payment, 179 rubles as the cost of the purchased product, and 94 rubles as the postage expenses were recovered from the defendant in favour of the claimant.

The defendant filed with the IP Court a cassation appeal, where he asks to amend the decision of the court of first instance and of the court of appeal and decrease the compensation to 30,000 rubles.

In support of the filed cassation appeal, the defendant remarks that, when determining the amount of compensation, the courts did not take into account the nature of the infringement and the extent of the infringer’s responsibility, that the claimed compensation many times exceeds the claimant’s losses, that the entrepreneur’s infringement is a one-time infringement as well as that the use of intellectual property subject matters, the rights to which belong to other persons, infringing these rights was not substantial part of the defendant’s business activities and was not gross.

The IP Court comes to the conclusion that there are no legal grounds to satisfy the defendant’s cassation appeal. The compensation amount to be recovered should be explained by the court.

At the same time, Clause 64 of Resolution of the Plenum of the Supreme Court No. 10 dated 23 April 2019 On Application of Part IV of the Civil Code explains that the compensation may be decreased when one action infringes the rights to several results of intellectual activity or means of individualization (musical work and its phonorecord; work and trademark, etc.)

The provisions of Article 1252 of the Civil Code apply only to multiple infringements and only if the defendant asserts that it is necessary to apply the relevant procedure for decreasing compensation. It should also be taken into account that the compensation is liability for the actual infringement covered by the unity of the infringer’s intents.

The compensation amount may be decreased below the minimum limits established by law in exceptional cases only (taking into account the provision of paragraph three of Clause 3 of Article 1252 of the Civil Code and the legal position contained in resolution No. 28-P dated 13 December 2016 as well as the explanations given in Resolution No. 10), provided that the defendant asserts that it is necessary to apply the relevant procedure for decreasing compensation.

For this purpose, the party asserting that such decrease is necessary is obliged to prove the necessity to apply such a measure by the court in accordance with Article 65 of the Commercial Procedure Court.

As it follows from the case files, the claimant asserted the minimum amount of compensation for the infringement of the exclusive rights (10,000 rubles for each infringement).

At the same time, in violation of the provisions of Article 65 of the Commercial Procedure Code, the defendant did not present evidence that would result in a decrease in the compensation below the minimum limit established by law.

Since the courts established the fact that the claimant had exclusive rights to the trademarks and works of visual arts, for which the stated claims were asserted, as well as the actual infringement by the defendant of the claimant’s exclusive rights, in the absence of a reasoned statement submitted by the defendant that it was necessary to decrease the asserted amount of the compensation, the courts lawfully recovered from the defendant 10,000 rubles for each infringement of the exclusive rights.

3. Patents

IP Court considers that Rospatent made erroneous conclusion that the information disclosed in the cited prior art could not be incorporated in the prior art to check the disputed utility model for its meeting the “novelty” patentability criterion as it was made by incorrect application of Article 1351 of the Civil Code (IP Court, Decision dated 15 May 2020 on case No. SIP-725/2019)

ARTWAY STARTUP LLC filed with the IP Court a claim for invalidation of the Rospatent’s decision dated 24 July 2019 on dismissal of the objection dated 07 February 2019 to patent of the Russian Federation No. 169627 for a utility model and for compelling Rospatent to reconsider the company’s objection dated 07 February 2019.

By Rospatent’s decision dated 24 July 2019, the company’s objection was dismissed; patent of the Russian Federation No. 169627 was upheld.

In the company’s objection, it was noted that all features of an independent claim, except for minor features “the edges have upper faces inclined to the plane of the blade at an angle (?) of 5–50°”, became known before the priority date of the utility model from the videos posted on YouTube (the sources are cited in the decision).

At the same time, the objection emphasized that posting these videos in the personal account of the Safe Woodcutter channel before the priority date of the utility model under the disputed patent was documented by record of inspection of evidence No. 39 AA 1564976-1564978 dated 17 January 2018.

After analysing the company’s and patent holder’s arguments, Rospatent considered that the record of inspection of evidence certified the fact that the above videos with the information about the woodcutter were on the Internet on the date of the notary’s inspection of that page (17 January 2018), that is, after the priority date (08 July 2016) of the utility model under the disputed patent.

Rospatent also confirmed the fact that the information about the date of posting the videos on YouTube was publicly available on the Safe Woodcutter channel. At the same time, the submitted documents do not confirm the fact that the videos were publicly available before the priority date of the utility model under the disputed patent.

Rospatent noted that the videos on YouTube may be publicly available, may be available with limited access, or available by sharing the link. At the same time, the access settings may be changed by the YouTube channel administrator any time.

Taking into account the reference in the record of inspection of evidence that “the information shown in the annexes to this record was not publicly available; obtainment of such information required entry of registration data provided by the claimant and authorization”, Rospatent came to the conclusion that, at the time of inspection by the notary, the user name and a password were required to access these videos, that is, they were not publicly available.

For this reason, Rospatent recognized the company’s arguments that all material features of the claim of the utility model under the disputed patent were intrinsic to the woodcutter, information about which was disclosed in the videos posted on YouTube, as not confirmed by the company.

Thus, Rospatent came to the conclusion that the company’s objection contained no arguments confirming that all material features of the independent claim of the utility model under the disputed patent were known from the cited prior art and, therefore, contained no arguments making it possible to recognize the utility model under the disputed patent as not meeting the “novelty” patentability criterion, since it established that the cited prior art could not be regarded as documentary confirmation of the dates, from which the information about the videos was publicly available on the Internet and, accordingly, that it became publicly available before the priority date of the disputed utility model.

The IP Court disagreed with the said arguments of Rospatent.

Filing with Rospatent the objection to the patent, the Company pointed out that all material features of the claim of the utility model under the disputed patent were intrinsic to the woodcutter, the information about which was disclosed in the videos posted on the Internet (YouTube), which uploading dates were 15 June 2016, 04 July 2016, and 12 June 2016, accordingly, as well as attached to the objection materials the record of inspection of evidence by the notary dated 17 January 2018, the company’s letter to Youtube LLC dated 05 December 2017, the letter of Youtube LLC to the company, the Internet printouts from websites https://support.google.com on 1 sheet and https://studio.youtube.com on 13 pages confirming, in the opinion of the person that filed the objection, posting of the videos to be publicly available on YouTube.

However, Rospatent considered that the said evidence did not confirm the date, from which the information about the videos was publicly available on the Internet, and, accordingly, became publicly available before the priority date of the disputed utility model.

The IP Court found the conclusion of Rospatent ungrounded, since Clause 4.3 of the Rules for Submitting Objections and Applications, which stipulated the duty of the Chamber of Patent Disputes to ensure conditions for full and non-biased consideration of the case, was violated.

The IP Court also found ungrounded the argument of Rospatent that the record of inspection of evidence dated 17 January 2018 did not confirm that the date of publication of the video materials was before the priority date of the disputed utility model.

The court also noted that the record of inspection of evidence certified the authenticity of the video materials as well as the date of their publication and the fact that the video was viewed by the Internet users for a long time, therefore, it could not be with limited access not least because there were no identification signs, indicating that this video was with limited access only, on the screenshots available in the files of the case.

The conclusion of Rospatent that, at the time of inspection by the notary, the user name and a password were required to access these videos, so the information was not publicly available, was not confirmed. The arguments of the administrative authority on the limited access to the video file are also assumptions not confirmed.

At the same time, as explained in Clause 137 of Resolution of the Plenum of the Supreme Court No. 10 dated 23 April 2019 On Application of Part IV of the Civil Code, when considering cases on challenging decisions of Rospatent, the person submitting the objection may produce evidence that was not the subject of the examination by the administrative body when rendering the challenged decision.

Rospatent did not point out what circumstances did not allow it to take into account the date of posting the video on the Internet shown on YouTube video hosting page and shown in the record of inspection of evidence by the notary dated 17 January 2018 when determining the possibility of incorporating the video in the prior art.

Rospatent proceeded from the fact that the record of inspection of evidence dated 17 January 2018 only certified that the videos containing the information about the woodcutter were on the Internet at the specified addresses on the date of the notary’s inspection of this page.

As part of securing evidence, the notary records the presence of certain information on the Internet on a certain date i.e. the date of inspection.

The record of inspection of evidence was made by the notary who recorded the content of the video on the YouTube video hosting page and the date of its posting recorded by the video hosting itself.

Thus, taking into account that, to determine the prior art, the information contained in the information source, which any person may view on the Internet and which publication date should be confirmed to incorporate such information in the prior art, is considered as publicly available, the IP Court considers that Rospatent came to the erroneous conclusion that the information disclosed in the cited prior art may not be incorporated in the prior art to check the disputed utility model for meeting the “novelty” patentability criterion, since it was made by incorrect application of Clause 2 of Article 1351 of the Civil Code.

Therefore, in violation of the requirements of Part I of Article 65 of the Commercial Procedure Code, Rospatent did not prove that the circumstances served as a basis for rendering its challenged decision were lawful and grounded.

Since the circumstances indicated by the company in its objection dated 07 February 2019 are material but their consideration was ignored by Rospatent, this circumstance is an independent basis for invalidation of the rendered non-regulatory act.

Since Rospatent committed significant violations of the procedure for considering the company’s objection, the IP Court comes to the conclusion that it is necessary to compel Rospatent to reconsider the company’s objection dated 07 February 2019 to patent of the Russian Federation No. 169627 for the utility model.

4. Patent extension

Extension of the validity period of the patent for a medicine — decision of the IP Court dated 28 November 2019 on case No. SIP-740/2018 should be upheld and the cassation appeal of the Federal Service for Intellectual Property should be dismissed (Presidium of the IP Court, Resolution dated 4 June 2020 on case No. SIP-740/2018)

GILEAD PHARMASSET LLC filed with the IP Court a claim for invalidation of decisions of Rospatent No. 18I000561/2651892 dated 20 July 2018 on refusal to extend validity period of patent No. 2651892 and No. 08/16-17648 dated 09 October 2018 on dismissal of the complaint against refusal to extend the validity period of patent No. 2651892; for compelling Rospatent to extend the validity period of patent No. 2651892 based on the patent holder’s application dated 20 June 2018. By decision of the IP Court dated 28 November 2019, the entity’s claims were satisfied.

Having disagreed with the rendered decision, Rospatent and Pharmasyntez Joint Stock Company filed cassation appeals with the Presidium of the IP Court, where they requested to reverse the decision of the court of first instance.

The court of first instance came to the conclusion that the scope of legal protection of the invention in independent claim 1 of the invention under patent No. 2651892 covered any stereoisomer of the compound specified in this claim at the phosphorus atom, including to Sofosbuvir, for which an application for extending the validity period of the patent was submitted, and the set of features proposed by the patent holder and defining the scope of legal protection of the invention was identical to the chemical formula of Sofosbuvir contained in marketing authorization No. LP-003527 dated 25 March 2016.

Therefore, the court of first instance came to the conclusion that the feature “or its stereoisomer” specified in independent claim 1 of the claims of the invention under patent No. 2651892 was a derivative of the basic compound isopropyl ether… of -propionic acid, namely S stereoisomer at the phosphorus atom, and its preparation was a standard procedure if the properties and activity were obviously kept in this scope.

Along with this, the court of first instance took into account the fact that the possibility to use each particular stereoisomer to suppress replication of the hepatitis C virus followed for a specialist from the examples presented in the application description.

Taking into account the foregoing, the Presidium of the IP Court rejected the argument of the cassation appeal of Rospatent on non-compliance of the conclusions of the court of first instance with Clause 2 of Article 1363 of the Civil Code and Sub-clause 1 of Clause 8 of Procedure No. 809 and on violation of the provisions of Part 2 of Article 69 of the Commercial Procedure Code.

In order to support its statement that it is impossible to extend the validity of the patentee’s exclusive right to the invention Rospatent explained that the chemical formula of the Sofosbuvir medicine disclosed in the independent claim 1 of the invention presented by the applicant for the additional patent is identical to chemical composition under independent claim 8 of the invention under patent No. 2478104. That composition was also examined by IP Court in another case (СИП-422/2018) where the court confirmed that the composition is not sufficiently disclosed in the application on which basis those patents had been granted. The court stated that neither the application materials (No. 2009139968) nor the documents on which base priority was claimed, nor the source publicly available before the priority date of the patent in question give description of the means and methods which could make possible embodiment of the invention.

The Presidium of IP court observed with regard to that argument:
When considering extension of the validity period of the exclusive right to the invention and adoption of a decision on issue of an additional patent, no procedure for evaluating patentability of the invention was provided, for which reason Rospatent should have established only that the scope of legal protection of patent No. 2651892 included a product (in this case, a medicine) having the claims containing the set of features of the patented invention.

In order to determine whether a particular medicine falls within the claims of the invention characterized in general, the following totality of points should be established: A particular substance (each component of the combination), for which use the authorization was obtained, actually falls within the general claims characterized in the patent;

This particular substance (or each component of the combination) was expressly disclosed in the patent description as falling within the general claims characterized in the patent, or a specialist in the relevant area could determine that this particular substance (or each component of the combination) fell within the general claims characterized in the patent from the patent description and the prior art as at the priority date of the patent.

The Presidium of the IP Court agreed with the conclusion of the court of first instance that independent claim 1 of the invention under patent No. 2651892 was identical to independent claim 1 of the invention under patent No. 2478104 examined when considering case No. SIP-422/2018, which incorporated the feature “or its stereoisomer”.

Due to the fact that the scope of consideration of the case in the court of cassation is limited to checking whether the provisions of substantive and procedural law are applied correctly by the courts and whether their conclusions on the application of the legal norms correspond to the facts established on the case and the evidence available in the case, there are no grounds to reverse or change the appealed judgment.

In light of the foregoing, there are no grounds to reverse the appealed judgment. The cassation appeal of Rospatent is to be dismissed.

5. Trademarks

When evaluating the likelihood of confusion of the trademark, the court of appeal reasonably proceeded from the fact that the claimant’s trademark under certificate No. 36 has become widely known in the motor industry market since 31 December 1999, which was due to the long and intensive use by the claimant of his trademarks under his control, it is recognized among other trademarks in the Russian Federation, and, as a result, the use of confusingly similar designations poses a great threat of confusion of these trademarks and the designation used by the defendants in the minds of consumers (Supreme Court, No. 305-ES20-6564, Ruling dated 15 May 2020)

Having examined the cassation appeal of KDR-GROUP Limited Liability Company against the resolution of the 10th commercial court of appeal dated 21 October 2019 and the resolution of the IP Court dated 11 February 2020 on protection of the exclusive rights to the trademarks, the Supreme Court established:

By decision of the court of first instance dated 28 June 2019, the claim was dismissed.

en_01.jpgBy resolution of the court of appeal dated 21 October 2019 and the resolution of the court of cassation dated 11 February 2020, the court decision dated 28 June 2019 was reversed, the claim was satisfied, the entrepreneur was prohibited from using the designation “KAMAZ” confusingly similar to the claimant’s trademarks in the domain name kamazi.ru, KDR-GROUP and the entrepreneur was prohibited from using it on the pages of kamazi.ru website, and KDR-GROUP was prohibited from using it in its e-mail addresses infoand zakaz at kamazi.ru. KDR-GROUP was obliged to publish the court judgment in Moskovskaya Pravda newspaper.

In its cassation appeal, the appellant refers to incorrect application of legal norms by the court of appeal and the court of cassation.

Having examined the arguments provided in the appeal, the judge of the Supreme Court concluded that there are no grounds, on which the cassation appeal may be referred for consideration in the court session of the Collegium on Economic Disputes of the Supreme Court.

By itself, the duration of use of a particular designation by different persons before the filing date of application for a trademark does not evidence that this designation has no distinctiveness (IP Court, Decision dated 1 June 2020 on case No. SIP-976/2019)

Petro LLC filed with the IP Court a claim against Rospatent to cancel the decision dated 30 August 2019 rendered following consideration of the objection dated 24 May 2019 to the decision dated 18 February 2019 on refusal to perform state registration of the “TROIKA” trademark under application No. 2017731313 with regard to the goods of Class 34 according to ICGS. Having considered the files of the case, the court considers the claims to be satisfied for the following reasons.

en_02.jpgBy the decision dated 18 February 2019, Rospatent refused to register the applicant’s trademark under application No. 2017731313. The said decision was based on the conclusions of the examination panel, which found that the claimed designation “TROIKA” has no distinctiveness in general, for which reason it cannot be registered as a trademark based on Clause 1 of Article 1483 of the Civil Code. In this instance, Rospatent proceeded from the fact that the claimed designation “TROIKA” (and its transliterated designation “ТРОЙКА”) was used by several companies for a long time before the filing date of the application to label tobacco products belonging to class 34 according to ICGS. Rospatent also noted that Petro did not produce any documents proving the acquired distinctiveness of the claimed designation.

On 24 May 2019, the applicant submitted to Rospatent an objection to the said decision, where it expressed its disagreement with the conclusions contained therein.

By the decision dated 30 August 2019, Rospatent dismissed the company’s objection and upheld the decision dated 18 February 2019 on refusal to perform state registration of the trademark under application No. 2017731313, since it came to the conclusion that the claimed designation does not comply with the requirement provided for by Clause 1 of Article 1483 of the Civil Code.

When rendering the said decision, Rospatent proceeded from the fact that the designation “TROIKA” claimed by the company is a transliteration of the word “ТРОЙКА” in Latin letters and is perceived unambiguously.

Based on the information from the open sources on the Internet, the administrative authority found that the claimed designation has no distinctiveness due to the use of its transliteration (the word “ТРОЙКА”) by different persons when labelling the goods similar to the goods of Class 34 according to ICGS, with regard to which the applicant claims legal protection.

Rospatent also took into consideration that by its decisions dated 18 August 2017 on the trademarks “ТРОЙКА” and “TROIKA” (certificates No. 437841 and No. 437842) rendered following consideration of the objections dated 17 May 2017, the legal protection of the trademarks “ТРОЙКА” and “TROIKA” was invalidated with regard to the goods in Class 34 according to ICGS due to their non-compliance with the requirements of Clause 1 of Article 1483 of the Civil Code.

With regard to the applicant’s argument on its exclusive right to the well-known trademark under certificate of the Russian Federation No. 38, containing the word “ТРОЙКА”, the administrative authority noted that this trademark makes completely different general visual impression as compared to the claimed designation, since it focuses on a stylized image of a horse cart directed by a coachman, and the font of the word element “ТРОЙКА” is graphically processed.

Being guided by the foregoing, Rospatent agreed with the conclusions of the examination panel that the designation under application No. 2017731313 cannot be registered as a trademark with regard to the claimed goods of Class 34 according to ICGS under Clause 1 of Article 1483 of the Civil Code.

Having disagreed with that decision, Petro filed with the IP Court a claim on this case and the court, when reversing the decision of Rospatent, noted, among other things, the following points.

The mere fact of the designation’s use by different persons before the filing date of application for a trademark is not sufficient to establish the associative links that arose or could arise among consumers in connection with this designation, and, accordingly, to conclude that the designation has no distinctiveness. This fact should be taken into account along with other facts of the case evidencing formation or possible formation of associations among consumers in connection with a particular designation.

At the same time, duration, intensity of the designation’s use, possible disappearance of associative links due to the remoteness of the designation’s use in time from the filing date of the application for a trademark, and consumer awareness of the designation’s use by different manufacturers may be, in particular, taken into account.

Similar legal position was expressed in the resolutions of the Presidium of the IP Court dated 06 February 2015 on case No. SIP-537/2014 and dated 09 February 2015 on case No. SIP-687/2014.

Therefore, by itself, the duration of use of a particular designation by different persons before the filing date of the application for a trademark does not evidence that this designation has no distinctiveness.

The Collegium believes that the conclusion of Rospatent that the verbal designation claimed by Petro for registration as a trademark does not comply with the requirement set by Clause 1 of Article 1483 of the Civil Code.

Accordingly, the evidence produced, including that obtained from the Internet, is evaluated for its relevance to the period to be examined, which means the time of filing of the application for trademark registration and the time of filing of the objection.

The court evaluates reliability of the evidence obtained through self-recording of the information available on the Internet by the parties, both for actual posting of such information on the Internet during certain period and for its reliability. The court draws attention to the erroneousness of the Rospatent’s conclusion that the claimed designation has no distinctiveness, which is based solely on the argument that the designation “Troika” was used to individualize cigarettes by different manufacturers.

In addition, the conclusions based on the results of consideration of the objection by the Chamber of Patent Disputes with regard to the trademarks under certificates No. 437841 and 437842 and taken as a basis of the decision do not contain any information about manufacturing by any third parties in 2017 or earlier of the tobacco products labelled with the disputed designation (or its transliteration “Тройка”) either.

The IP Court also notes that Rospatent did not duly evaluate the applicant’s argument that possible use by other persons of the disputed designation before the filing date of the application evidences the infringement by such persons of the applicant’s exclusive right to the well-known trademark under certificate of the Russian Federation No. 38, containing the word element “ТРОЙКА”, for which reason the circumstances of such use cannot evidence that the claimed designation (transliteration of the word element “ТРОЙКА”) lost its distinctiveness.

The Collegium believes that the scope and duration of use of the disputed designation established by Rospatent are not sufficient to establish the associative bonds that arose or could arise among consumers in connection with the designation and, accordingly, to conclude that the designation lost its distinctiveness.

The IP Court believes that the violations committed by Rospatent when considering the objection of Petro are material, since they did not allow it to comprehensively, fully and without bias consider the dispute and they evidence both the illegality of the challenged decision of Rospatent rendered following consideration of this objection and the infringement of the rights and legitimate interests of Petro.

Under such circumstances, the Rospatent’s decision dated 30 August 2019 cannot be recognized as compliant with the law.

In this instance, the court believes that, to remedy the infringement of the applicant’s rights and legitimate interests, Rospatent should reconsider the objection of Petro.

The Presidium of the IP Court noted that, when considering this application, the well-known status of the claimed designation as a whole (but not of its remaining part that was not included in the designation previously recognized as well-known) should be evaluated and the approach applied by Rospatent is erroneous (Presidium of the IP Court, Resolution dated 28 May 2020 No. S01-180/2020 on case No. SIP-25/2019)

Rospatent invalidated the decisions of Rospatent on dismissal of the application filed by Red Bull GmbH for recognition of the trademark under international registration No. 789927 as well-known in Russia with regard to the goods in class 32 “energy drinks”.

en_03.jpgRospatent took into account that the combined designation comprising the verbal designation “Red Bull” showing two red bulls against the background of a golden circle is already recognized as well-known trademark No. 169 in the Russian Federation (No. 169) and noted that it is these elements that perform the main individualizing function in the claimed designation as well but pointed out that the company did not confirm the well-known status of the background as such, which is of secondary importance.

Having considered the cassation appeal of Rospatent against the decision of the court of first instance, which reversed the Rospatent’s decision, the Presidium of the IP Court noted the following points.

The court of first instance lawfully pointed out that Rospatent had not evaluated the evidence produced by the company and containing previously registered well-known trademark No. 169 (priority date: 01 January 2010) and had not reasoned the grounds for its rejection.

The Presidium notes the Rospatent was wrong stating that previous recognition of a part of the claimed designation (the combined designation comprising the verbal designation “Red Bull” showing two red bulls against the background of a golden circle) as a well-known trademark in the Russian Federation results in the need to prove the well-known status of the remaining elements (background) as such.

The Presidium of the IP Court noted that, when considering the application, the well-known status of the particular claimed designation as a whole (but not of its remaining part that was not included in the designation previously recognized as well-known) should be evaluated and the approach applied by Rospatent is wrong and, as a result, resolved to uphold the decision of the IP Court dated 16 December 2019 on case No. SIP-25/2019.

EAPO’S PRACTICE

Expansion of EAPO’s cooperation under the Patent Prosecution Highway Program

On 24 April 2020, the Memorandum of Understanding on the pilot Patent Prosecution Highway Program between the Eurasian Patent Office (EAPO) and the Finnish Patent and Registration Office (PRH) became effective.

The Memorandum of Understanding determines the basic principles of cooperation between EAPO and PRH on implementation of the pilot Patent Prosecution Highway Program (the “Pilot PPH Program”) as well as the conditions for launch and the duration of the program.

The implementation of the Pilot PPH Program between EAPO and PRH is planned to begin in the second half of 2020. The exact date will be additionally determined by the offices. The duration of the Program will be three years and may be further extended as agreed upon by the parties.

Since 1 May 2020, the PPH Program has been implemented by EAPO and the Japan Patent Office (JPO) on a continuous basis.

Rospatent Practice

1. Patents

Weight of the earring cannot be determined visually based only on its size; the larger element does not necessarily have greater weight (Chamber of Patent Disputes - decision dated 24 April 2020 under patent for utility model No. 181119)

The Chamber of Patent Disputes considered the objection to patent No. 181119 for the “Earring” utility model under application No. 2017140123/12 with the following claims (only claim 1 is cited):

“1. An earring comprising a decorative element and a fastening element, while the first part of the decorative element is connected to the end of the fastening element, characterized by the fastening element made in the form of a spiral turn, which weight does not exceed the weight of the decorative element”.

The objection stated that the Internet contains information posted about the earrings by designer and jewellery manufacturer Maria Black, which consist of fastening and decorative elements and which fastening element is made in the form of a spiral turn. It clearly follows from a visual inspection of the photos publicly available on the Internet that the fastening element weighs less than the decorative one.

The Collegium noted the following points.

The utility model under independent claim 1 of the disputed patent differs from the known solutions by the fastening element made in the form of a spiral turn, which weight does not exceed the weight of the decorative element.

The Internet printouts only show the appearance of the jewellery and specify the material it is made of.

However, the perspective showing these items does not make it possible to conclude that the fastening element of the earring is made in the form of a spiral turn. No data on the weight of fastening and decorative elements is provided in the Internet printouts. At the same time, it is not possible to agree with the opinion of the person who filed the objection that the weight of the earring elements can be determined visually based only on their size, since the larger element does not necessarily have greater weight. Thus, one of the earring elements can be larger but at the same time hollow (for example, tubular), while the other element can be smaller but solid.

The objection does not contain any arguments that make it possible to recognize the utility model under the disputed patent as not meeting the “novelty” patentability criterion and patent No. 181119 for the utility model is upheld.

2. Trademarks

The designation “IDCHAIN” is the name of a system that implements a Blockchain-based remote identification mechanism. Registration of the claimed designation as a trademark will be detrimental to the public interests, since the remote access and identification technology keeping the sequence of user actions in the program chain is possible in any field of the public activities and granting exclusive right to the said designation to one person will give that person unreasonable advantages over the other members of the public (Decision of the Chamber of Patent Disputes dated 15 April 2020)

The designation IDChain under application No. 2018757207 was filed on 24 December 2018 for registration as a trademark for the goods in classes 09, 16, 25, and 28 and the services in classes 35, 36, 38, 39, 41, 42, and 45 according to ICGS.

en_04.jpgRospatent refused registration of the trademark since the designation “IDCHAIN” is the name of the system that implements the Blockchain-based remote identification mechanism. Thanks to this system, banks will not have to share personal data and each operation will be recorded in Blockchain.

The applicant filed an objection, which the Collegium of the Chamber for Patent Disputes considered as unconvincing.

As per the English-Russian Dictionary of Computer Engineering and Information Technology, the word “ID” in Russian means “identifier”, “command decoder”, the word “CHAIN” means “path in the network”, “chain”, “chain algorithm”, “channel”, or “sequence”.

In the English-Russian Explanatory Dictionary of Computer Engineering, the word “chaining” means the formation of a chain.

1. As to hardware, a connection of several hardware elements so that they depend on one another.

2. In programming, a connection of two or more programs so that the first program launches the second, etc.

3. In programming, a sequence of statements, where each statement, except for the first one, uses the output of the previous statement as input.

4. In batch files, a link between two or more batch files so that completion of each file automatically invokes execution of the next one.

5. In data storage systems, a link between two or more elements of storage. For example, one file may actually be stored in several sectors of the disk, each of which indicates the next sector continuing the same file. Such sectors are called linked or a chain.

In later dictionaries in computer science available on the Internet, the word “CHAIN” translated from English into Russian means “chain” and is used in Microsoft software products (https://www.microsoft.com/ru-ru/language/Search?&searchTerm=chain&langID=635&Source=true&productid=0).

Taking into account the foregoing meanings of the word elements comprising the claimed designation, it should be concluded that the designation “IDChain” is translated as “chain identifier”, is widely used in computer engineering, evokes associations with remote access computer technologies, and, therefore, is descriptive as it indicates the properties of goods (any goods that may be used by means of remote identification technology (as well as any goods, into which such technology is integrated or which relate to access to the chain through an electronic identifier)) and services (services that may be either provided through, or associated with, identification in the program chain).

Besides, the Collegium checked the links to websites https://tass.ru/press-relizy/4919340 and https://nangs.org/news/it/blokchejn-lishit-raboty-tysyachi-chinovnikov available in the files of the case, which made it possible to establish that there is information about the use of the designation “IDCHAIN” by other parties to civil law transactions before the priority date of the claimed designation.

Information about use of the designation “IDCHAIN” by various business entities, posted on the above websites before the priority date of the claimed designation, may be taken into account not as an independent reason for refusal but in conjunction with the above dictionary meanings of the word elements “ID” and “CHAIN”. The analysis of dictionary sources and the Internet information resources makes it possible to establish that the designation “IDCHAIN” is known to an average ordinary Russian consumer and is associated by him exactly with the “remote identifier” system in computer technologies.

At the same time, the designation “IDCHAIN” may mislead the consumer as to the properties and purpose of part of the goods in Class 09 according to ICGS, which are measuring instruments, rescue equipment, accessories for electronic devices, all goods of class 16 according to ICGS, which are stationery and office equipment, all goods in class 25 according to ICGS, part of the goods in class 28, which are sports goods, accessories for games not related to computer technologies, children’s toys, etc.

Taking into account the foregoing, it is not possible to agree with the applicant that the designation “IDCHAIN” is coined and the examination panel’s conclusion that, for part of the claimed goods and services, the designation is their characteristic (property and purpose) and, for the remaining goods and services not related to the “IDCHAIN” technology, the designation may mislead the consumer as to the characteristics of the goods and the properties of services should be recognized as lawful, therefore, the claimed designation does not meet the requirements of Clause 1 and Sub-clause 1 of Clause 3 of Article 1483 of the Code.

The Collegium also notes that registration of the claimed designation as a trademark will be detrimental to the public interests, since the remote access and identification technology keeping the sequence of user actions in the program chain is possible in any field of the society’s activities and granting exclusive right to the said designation to one person will give this person unreasonable advantages over the other members of the society.

The element “XJ220” included in the claimed designation is a simple combination of consonants and figures, while the said elements do not have original graphic design and their combination does not create another level of perception of the designation different from the perception of individual elements included in it (Decision of the Chamber for Patent Disputes dated 06 April 2020)

On 13 September 2019, Rospatent took a decision on registration of a trademark with regard to the goods of classes 09, 12, 14, 16, 18, 25, and 28 and the services of class 37 according to ICGS excluding the element “XJ220” from legal protection, since this element has no distinctiveness as is a combination of simple letters “XJ”, which have no verbal meaning and distinctive graphic design, and of simple figures “220”, which have no distinctive graphic design either, for which reason this element is unprotectable based on Clause 1 of Article 1483 of the Code.

IDismissing the objection, the Collegium of the Chamber for Patent Disputes noted the following points.

en_05.jpgIt does not follow from the submitted materials that the element “XJ220” itself, independently and without any additional elements, acquired distinctiveness, since this designation is used in conjunction with the car brand “JAGUAR”, that is, in combination with a word element.

The documents produced by the applicant to prove that the designation acquired distinctiveness are taken into account when taking a decision on state registration of a trademark if they confirm that, before the filing date of the application, the claimed designation was perceived by a consumer as the designation intended to individualize the goods of a certain manufacturer.

The element “XJ220” included in the claimed designation is a simple combination of consonants and figures, while the said elements does not have original graphic design and their combination does not create another level of perception of the concerned designation different from the perception of individual elements included in it.

Thus, the claimed designation contains the unprotected element “XJ220”. In this respect, this element may not be granted legal protection with regard to the claimed goods and services.

The applicant’s arguments that the claimed designation acquired distinctiveness due to the fact that the applicant’s products, in particular, those under the designation “JAGUAR”, are widely known and the element “XJ220” of the claimed designation has distinctiveness as such due to acquiring verbal specificity when pronounced and being easily memorized by ordinary consumers as well as this element has also acquired distinctiveness as a result of its long use and ordinary consumers can easily distinguish the products designated by the combination “XJ220”, both with and without the word “JAGUAR”, from any other homogeneous products may not be taken into consideration in view of the following points.

It does not follow from the submitted documents that the element “XJ220” itself, independently and without any additional elements, acquired distinctiveness, since this designation is used in conjunction with the car brand “JAGUAR”, that is, in combination with a word element.

The objection documents do not contain any evidence that, as a result of long and intensive use in the Russian Federation, the designation “XJ220” acquired distinctiveness and is associated solely with the applicant’s products.

The Collegium came to the conclusion that the element “XJ220”, as lawfully stated in the Rospatent’s decision, does not meet the requirements set out in Clause 1 of Article 1483 of the Code.

3. Well-known trademarks

In June, Rospatent recognized the following trademark (No. 213, decision dated 16 June 2020) as well-known:

raffll.jpg
Right Holder — Soremartec S.A.(Luxembourg)
Goods/Services — Confectionery, namely candies (class 30 according to ICGS)
Date of Becoming Well-Known — 22 August 2017

“Raffaello” was recognized as a well-known trademark only upon reconsideration of the application filed by Soremartec S.A. in accordance with the decision of the IP Court. Earlier, two years ago, Rospatent refused to recognize it, having considered that the company had not proven that the claimed designation in the presented design and range of colours was used for a long time for labelling certain goods and that consumers associate this trademark with such labelling.

4. Appellations of origin

During the period from April to June, Rospatent registered seven appellations of origin:
(Number in the Register of Appellations of Origin - Appellation of Origin - Goods)

237 - KARGOPOL CLAY TOY - Clay toy
238 - LIDA BEER - Beer
239 - LIDA KVASS - Kvass
240 - CRIMEAN - Drinking therapeutictable natural mineral water
241 - KARELIAN PASTIES - Open-faced rye pasties made of unfermented dough
242 - OSSETIAN TRADITIONAL COSTUMES - Traditional costumes and their components
243 - KUBACHI - Decorative and utilitarian silverware


Share:
Back