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

12 May 2021

Contents

Laws and Draft Laws

Government Enactments and Departmental Enactments

International Treaties of the Russian Federation

DISPUTES OVER GRANTING AND TERMINATION OF PROTECTION

DISPUTES OVER INFRINGEMENT OF THE EXCLUSIVE RIGHT

Rospatent's Practice

Laws and Draft Laws

It is possible to include electronic 3D models of the claimed items in applications and to obtain electronic patents and certificates

On 20 July 2020, Federal Law No. 217-FZ dated 20 July 2020 On Amendments to Part Four of the Civil Code was published.

The amendments allow applicants to submit electronic three-dimensional (3D) models in their applications for inventions, utility models, industrial designs, and trademarks.

In addition, the titles of protection (except for a patent for secret invention) will be issued in electronic form. At the same time, applicants will still be able to obtain them in hard copy as well. The law entered into force on 17 January 2021.

Law on Geographical Indications

On 27 July, Federal Law No. 230-FZ dated 26 July 2019 entered into force that amended Part IV of the Civil Code providing for, along with protection of appellations of origin of goods, protection of yet another intellectual property subject matter — a geographical indication.

Rospatent will engage third party organizations to conduct information search and expert examination of applications for inventions and utility models. Free patenting is limited

On 31 July, Federal Law No. 262-FZ dated 31 July 2020 On Amendments to Part Four of the Civil Code was published. The law introduces a procedure for preliminary information search and preliminary evaluation of patentability under applications for inventions and utility models engaging Russian specialized scientific and educational organizations that will be accredited by Rospatent.

Applicants will be able to use the preliminary information search service at their discretion. At the same time, they get an additional opportunity to change the application materials after obtaining the results of such a search when submitting a request for substantive examination of the application. The results of the preliminary search and preliminary evaluation of patentability will be taken into account by Rospatent when conducting substantive examination of the application.

The law also entitles the Government to determine the number of applications that may be filed by one applicant within a year without paying a fee if he files a statement of his willingness to surrender the patent, if issued, to any person. Now, the number of such applications is not limited.

The law will enter into force after one year from its publication date, that is on 1 August 2021, except for the provision on the new Government’s right, which entered into force on 29 October 2020 and in accordance with which the Government adopted relevant decree No. 1676 dated 13 October 2020.

The said decree has amended the Regulation on Patent Fees; these amendments determine a list of fees, from which an applicant and a patent holder are exempt when submitting an application for willingness to conclude an agreement for assignment of a patent on the terms and conditions compliant with the established practice.

The same decree has established that such an exemption from payment of patent fees is granted for the first 10 applications filed by the applicant within a calendar year.

The State Duma has approved amendments to the law On Patent Attorneys in the first reading

On 30 September 2020, the State Duma approved a draft law on amendments to the law On Patent Attorneys of the Russian Federation in the first reading. The draft law was introduced by Senators Umakhanov, Gumerova, and Vasilenko.

The amendments envisage rights, duties, and liability of organizations providing patent attorney services to third parties and grant a patent attorney certain rights and guarantees.

The draft law introduces a regulatory definition for “organization of patent attorneys” and determines its duties towards a client.

The amendments also provide for the following developments:

  • A possibility to create an office of the patent attorney;
  • Introducing the client-attorney privilege concept;
  • Setting the patent attorney’s status in court proceedings equal to the attorney’s status;
  • Introducing a duty of public authorities and other organizations to respond to a patent attorney’s request within a month;
  • Granting patent attorneys a right to access Rospatent’s information resources containing information about registration of intellectual property subject matters.

Resolution of the Constitutional Court No. 40-P dated 24 July 2020 regarding the case on constitutional review of Subclause 2 of Clause 4 of Article 1515 of the Civil Code in Connection with the Request from the 15th Commercial Court of Appeal

The Constitutional Court recognized Sub-Clause 2 of Clause 4 of Article 1515 of the Civil Code as noncompliant with the Constitution to the extent that this provision does not allow the court, when determining the compensation payable to the right holder in case of infringement of the exclusive right to a trademark, to reduce, taking into account the facts of a particular case, the total compensation if such amount is many times more than the losses caused to the right holder (given that the losses can be calculated with a reasonable degree of certainty, and their excess should be proved by a defendant) and if, in this case, the circumstances of a particular case evidence in particular, that the offence was committed by the defendant for the first time and that the use of intellectual property, the rights to which belong to other persons, infringing those rights was not a substantial part of its business activities and was not gross. The Constitutional Court pointed out that the legislature should make amendments to the current legal regulation, arising from the Resolution of the Constitutional Court.

Until the civil legislation is amended, the courts may not be deprived of the opportunity to take into account all circumstances relevant to the case, including the nature of the infringement and the defendant’s financial straits and, if there is a relevant statement from him, to reduce the compensation below the amount set forth by Sub-Clause 2 of Clause 4 of Article 1515 of the Civil Code. At the same time, in order to prevent excessive interference with the defendant’s property, on the one hand, and to discourage him to use intellectual property without a contract on the other hand, such compensation may be reduced by the court not more than by two times (i. e., it may not be less than the cost of the right to use a trademark).

Governmental Enactments and Departmental Enactments

Decree of the Government of Russia No. 1388 dated 09 September 2020 On Approval of the Rules for Control over Retention of Special Properties of Goods, for Which an Appellations of Origin Is Registered

As per Article 1522.1 of the Civil Code, the competent authority, whose opinion has been attached to the application for registration of an appellation of origin of goods or to the application for granting of a right to use the appellation of origin of goods, must control retention of the special properties of the goods, for which the appellation of origin is registered. Such control consists in consideration of statements on disappearance of conditions typical for the relevant geographical location and on impossibility to produce goods having special properties. Such statements may be submitted by anyone, including a public authority.

Based on the submitted statements, the competent authority requests the positions of all holders of certificates of the right to use the appellation of origin of goods and of the head of the Russian constituent entity, where the relevant geographical location is situated. The position of professional associations of manufacturers of the relevant goods may be requested, as well.

Based on the results of consideration of the applications, taking into account the positions obtained, the competent authority can prepare an opinion on the disappearance of the conditions typical for this geographical location and on the impossibility to produce goods having special properties. The prepared opinion is sent by the competent authority to Rospatent along with an application for termination of protection of the appellation of origin of goods and for termination of the right to use the appellation of origin of goods.

The application of the competent authority is considered by Rospatent in accordance with the Rules for Consideration by Rospatent of Disputes in Administrative Proceedings.

Decree of the Government of Russia No. 1848 dated 16 November 2020 On Approval of the Rules for Payment of Remunerations for Employees’ Inventions, Employees’ Utility Models, and Employees’ Industrial Designs

Clause 5 of Article 1246 of the Civil Code establishes the Government’s powers to determine rates of, procedure, and period for payment of remunerations for employees’ inventions, utility models, and industrial designs. In accordance therewith, the Rules for Payment of Remunerations have been approved that apply when there is no relevant agreement concluded between an employer and an employee.

As per the new Rules (the previous ones were adopted in 2014), for the employer’s use of an employee’s invention, an employee’s utility model, or an employee’s industrial design, the employee who is the author of the same should be paid a remuneration in the amount of three average salaries (previously, one salary) for the last 12 calendar months of such a development being in use. If the employer sells a licence for use of a patented employee’s invention, utility model, or industrial design, the employee should be paid 10 % of the licence fees received by the employer; if the patent for the employee’s invention, utility model, or industrial design is alienated, the employee should be paid 15 % of the remuneration received by the employer.

The Decree became effective on 1 January 2021 and is in force until 1 January 2027.

New Rules for Consideration and Resolution of Disputes by a Federal Executive Authority for Intellectual Property in Administrative Proceedings are made effective

Joint order of the Ministry of Education and Science No. 644 and the Ministry of Economic Development No. 261 dated 30 April 2020 (registered with the Ministry of Justice on 25 August 2020 under No. 59454) approved the Rules Establishing the Procedure for Consideration and Resolution by Rospatent of Disputes over Granting and Termination of Legal Protection of Inventions, Utility Models, Industrial Designs, Trademark, Geographical Indications, and Appellations of Origin of Goods.

The grounds for consideration of a dispute, the procedure for filing an appeal, an application, and any other documents as well as the requirements for such documents, the procedure for receiving and registering an appeal or an application, the procedure for their consideration are determined.

The new Rules are in effect from 6 September 2020. On the same date, the Rules for Filing Objections and Applications and Their Consideration by the Chamber for Patent Disputes approved by order of Rospatent No. 56 dated 22 April 2003 were recognized as inapplicable.

Rules for preparation and consideration of applications for geographical indications are set forth

On 7 September 2020, order of the Ministry of Economic Development No. 398 dated 03 July 2020 (registered with the Ministry of Justice on 26 August 2020 under No. 59495) entered into force, which approved:

  • Rules for preparation, filing, and consideration of an application for a geographical indication or an appellation of origin of goods;
  • Requirements for the documents contained in the application for a geographical indication, the application for an appellation of origin of goods, and their forms;
  • List of details to be specified in a certificate of exclusive right to a geographical indication or an appellation of origin of goods;
  • Forms of a certificate of exclusive right to a geographical indication or an appellation of origin of goods.

Order of the Ministry of Economic Development of Russia No. 697 dated 30 September 2015 and governing similar legal relations is repealed.

Protection symbols (emblems) of protected geographical indications and appellations of origin of goods

144_01.jpgOn 8 September 2020, order of Rospatent No. 94 dated 03 July 2020 (registered with the Ministry of Justice on 28 August 2020 under No. 59556) entered into force, which approved protection symbols of geographical indications and appellations of origin of goods.

The emblems applied to goods confirm that an appellation of origin of goods or a geographical indication is registered with regard to these goods, and the manufacturer of such goods has a registered right to this appellation of origin of goods or geographical indication. [APPELLATION OF ORIGIN OF GOODS GEOGRAPHICAL INDICATION]

Transformation of an appellation of origin of goods or an application for an appellation of origin of goods into a geographical indication or an application for a geographical indication, accordingly, and vice versa

The Civil Code stipulates that an appellation of origin of goods or an application for an appellation of origin of goods may be transformed by the right holder and the applicant into a geographical indication or an application for a geographical indication, accordingly, and vice versa. The procedure for such transformation is approved by order of the Ministry of Economic Development No. 399 dated 3 July 2020. On 14 September 2020, the Procedure became effective.

Review by third parties of documents of applications for geographical indications and appellations of origin of goods

In accordance with Article 1524 of the Civil Code, Rospatent publishes applications for geographical indications and appellations of origin of goods, after which anyone can review the application documents and obtain their copies. On 14 September 2020, the Procedure for Review of Documents of an Application for a Geographical Indication or an Appellation of Origin of Goods and Issuance of Copies of Such Documents as approved by order of the Ministry of Economic Development No. 417 dated 3 September 2020 became effective. The documents of application are reviewed, and their copies are issued in hard copy or in electronic form. Fees are charged for review of the documents of applications and for issuance of their certified copies.

The order of the Ministry of Economic Development has established the Procedure for Consideration of Oppositions to Granting of Legal Protection to a Geographical Indication or an Appellation of Origin of Goods and (or) to Granting of an Exclusive Right to a Geographical Indication or an Appellation of Origin of Goods

The Civil Code stipulates that, within 3 months after publication of the application for a geographical indication or an appellation of origin of goods, any person may review the application materials and file with Rospatent an opposition to granting of legal protection to the claimed geographical indication or appellation of origin of goods or to granting of a right to use the geographical indication or the appellation of origin of goods. At the same time, the Civil Code provides for an official procedure for consideration of such oppositions, which rules are set forth by the Ministry of Economic Development.

On 18 September 2020, the procedure for consideration of such oppositions as approved by order of the Ministry of Economic Development No. 356 dated 17 June 2020 entered into force. The Procedure stipulates that the oppositions to granting of legal protection or right to use the geographical indication or appellation of origin of goods may be filed both in hard copy and in electronic form through the Rospatent’s website. The oppositions accepted for consideration are considered by the department conducting examination of applications for geographical indications and appellations of origin of goods within 50 business days. No procedure for oral consideration of oppositions involving the parties (the applicant and the opponent) is stipulated. Based on the results of the consideration of the opposition, the opponent is sent a notice of its satisfaction or dismissal. The results of the consideration of the opposition are taken into account when rendering a decision on the application.

International Treaties of the Russian Federation

Ratification of the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention

On 4 December 2020, Federal Law No. 377-FZ dated 23 November 2020 On Ratification of the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention dated 9 September 1994 entered into force. The Protocol was adopted on 9 September 2019 at a diplomatic conference in Nur-Sultan, Republic of Kazakhstan.

The Protocol determines the procedure for filing, consideration, and examination of an application for a Eurasian patent for an industrial design and the rules for disposal of a Eurasian patent for an industrial design.

The Protocol is an addendum to the Eurasian Patent Convention. It provides for formation of a system of Eurasian patents for industrial designs, which will also be issued by the Eurasian Patent Office and will be valid in all member states.

The maximum term of a Eurasian patent for an industrial design may be 25 years.

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 WIPO Director General for storage. For a later acceding state, the Protocol will enter into force three months after it deposits its instrument of ratification or an instrument of accession to the depository for storage.

Ratification of the Treaty on Trademarks, Service Marks, and Appellations of Origin of Goods of the EAEU

On November 20, Federal Law No. 360-FZ dated 09 November 2020 On Ratification of the Treaty on Trademarks, Service Marks, and Appellations of Origin of Goods of the Eurasian Economic Union entered into force. The Treaty was signed on 3 February 2020 in Moscow. It will become effective on the date the Eurasian Economic Commission receives the last written notice that the required domestic procedures are implemented by all member states of the Eurasian Economic Union (EAEU).

Legal protection of trademarks and appellations of origin of goods of the Union registered in accordance with the Treaty will be valid throughout the Union.

The Treaty provides for a possibility to file an application for registration of a trademark or an appellation of origin of goods of the Union with any national patent office. Based on the filed application, after completion of the necessary procedures, the relevant designation is to be registered as an EAEU trademark protected in each member state of the Union (Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia).

The procedure for granting protection provides for joint efforts of patent offices of the Union states. No single interstate trademark office is provided for by the Treaty.

The Treaty also provides for a regional system for protection of appellations of origin of goods in the EAEU member states.

DISPUTES OVER GRANTING AND TERMINATION OF PROTECTION

The Presidium of the IP Court has issued Review of the IP Court’s Practice on Issues Related to Application of Clause 7 of Article 1483 of the Civil Code

In accordance with Clause 7 of Article 1483 of the Civil Code of the Russian Federation (the “Civil Code”), the designations may not be registered as trademarks for any goods if they are identical or confusingly similar to the geographical indications or the appellations of origin of goods protected in accordance with this Code or to the designation claimed for registration as such before the priority date of the trademark.

Based on the analysis of the decisions of the IP Court on the cases from 2014 to 2020, the review provides a number of positions:

  • Rospatent may refuse to perform state registration of the trademark identical or confusingly similar to a geographical indication or an appellation of origin of goods, regardless of whether there are any oppositions of the exclusive right holder to the use of such a geographical indication or an appellation of origin of goods;
  • The designation identical or confusingly similar to a geographical indication or an appellation of origin of goods may be registered as a trademark only in the name of the person who has the exclusive right to these geographical indications or appellations of origin of goods. If, in this case, the applicant has no such right, the compliance of the application with the other conditions should not be checked;
  • When comparing the geographical indications or the appellations of origin of goods and the designations claimed for registration as trademarks, the homogeneity of goods should not be evaluated, since the designations similar to these means of individualization may not be registered as trademarks for any goods;
  • The claimant’s exclusive right to the means of individualization similar to the opposed geographical indications or appellations of origin of goods and having an earlier priority cannot serve as a basis for granting legal protection as a new trademark to the claimed designation;
  • The legal approaches developed for analysing the likelihood of confusion between designations and trademarks may also apply when establishing the likelihood of confusion between the trademark and the geographical indication or the appellation of origin of goods, taking into account the specific features of each means of individualization.

The Supreme Court has called for a broad understanding of the interest when challenging a trademark due to its conflict with the public interests (Ruling of the Collegium on Economic Disputes of the Supreme Court No. 300-ES20-12511 dated 11 November 2020 on case No. SIP-819/2018)

Rospatent has satisfied the oppositions to the grant of legal protection to a trademark identical to an earlier trademark of the same right holder, registered for the same goods, which, in the opinion of the person challenging the registration of the later trademark and of Rospatent, conflicts with the public interests.

The right holder has challenged the Rospatent’s decision in the IP Court.

When reversing the Rospatent’s decision in part, the IP Court has pointed out that Rospatent had unlawfully satisfied the opposition to the trademark, since the opponent had not proven his interest in all goods, for which the challenged trademark had been registered.

When reversing the IP Court’s decision and dismissing the right holder’s claim, the Collegium of the Supreme Court has pointed out that the concept of interest with regard to challenge of the grant of legal protection to a trademark on the ground of a conflict with the public interests should be interpreted as broadly as possible, since the considered ground for challenging is intended to protect the public interests and not a private interest of a specific person and to prohibit an ungrounded monopoly on trademarks.

The Collegium of the Supreme Court has noted that the law provides no possibility to recognize several exclusive rights to the same trademark, since this conflicts with the absolute nature of an exclusive right, therefore, with the public interests. In this scenario, the interest in challenging should be interpreted as broadly as possible because it is about protecting not private, but public interest.

State authorities are obliged to perform the functions imposed taking into account the principle of protection of legitimate expectations (Decision of the IP Court dated 5 November 2020 on case No. SIP-333/2020)

Considering application filed by Maarschall Group B.V. No. 2019702683 for registration of a three-dimensional trademark, Rospatent has decided to grant protection to the claimed designation excluding the actual shape of a bottle and the numerical element “3” from protection. When excluding the shape of the bottle from protection, Rospatent has stated that the shape of the bottle does not have a set of features necessary and sufficient for consumers to remember it, that is, it has no distinctiveness.

144_02.jpgThere is no evidence submitted that the shape of the bottle itself, without word and figurative elements, has acquired distinctiveness in relation to the applicant before the filing date of the application, for which reason it cannot be included as a protectable element of the designation, since it contradicts the requirements of Clause 1 of Article 1483 of the Code.

The IP Court has disagreed with Rospatent, invalidated the Rospatent’s decision, and compelled Rospatent to reconsider the applicant’s appeal. The IP Court has pointed out that, when evaluating the protectability of the claimed three-dimensional designation, Rospatent has not evaluated some of its features being, in the applicant’s opinion, its unique and original elements.

Rospatent has not proved that these elements are also used by other manufacturers of similar products. Thus, it does not appear from the challenged decision of Rospatent on what evidence and information the administrative body has concluded that the claimed shape of the bottle is determined solely or mainly by its functionality, is traditional, and has no alternative for the items of the same purpose.

In addition, the court has pointed out that it is not clear from the Rospatent’s decision why, when deciding on granting of legal protection to the shape of the claimed designation, Rospatent had not taken into account the fact that the applicant had had patent of the Russian Federation for industrial design No. 118953 with the same shape of the bottle.

Granting legal protection to the claimed bottle as an industrial design indicates that the set of its essential features is unknown from the information that has become publicly available worldwide before the date of its priority, and the item itself is original, which can additionally evidence the originality of the shape of the bottle claimed as a three-dimensional trademark.

The IP Court has pointed out that state authorities are obliged to perform the functions imposed taking into account the principle of protection of legitimate expectations. Predictable behaviour of a state authority that has official power is one of the factors that control the arbitrary rule, create conditions for implementing the principle of legal certainty, and contributing to forming trust in the law and state actions among parties to legal relations.

DISPUTES OVER INFRINGEMENT OF THE EXCLUSIVE RIGHT

The Supreme Court has explained the grounds for granting injunctive reliefs in disputes over infringement of a trademark in the domain name. Refusing to grant urgent injunctive reliefs, the courts have not taken into account the specific features and peculiarity of the dispute related to the infringement of the exclusive rights to the trade name and the trademark as a result of the illegal use of domain names (Ruling of the Collegium on Economic Disputes of the Supreme Court of the Russian Federation No. 305-ES20-16127 dated 17 November 2020 on case No. А41-85820/2019)

Lunda LLC has asked the court to prohibit an individual entrepreneur from using the Лунда.рф and Lunda.su domains and demanded that, following the results of the court proceedings, the entrepreneur transfer the domains to it free of charge. Before considering the merits of the dispute, the claimant has also requested that the court grant injunctive reliefs that would prohibit the defendant from performing any actions aimed at waiving or transferring the rights to administer domain names, including changing the registrar.

The court of first instance, the court of appeal, and the court of cassation have dismissed the claimant’s request for granting injunctive reliefs, having stated that its arguments regarding the need for such reliefs are presumptive, since the claimant has not proved that failure to grant injunctive reliefs can damage it, impede or render impossible the enforcement of the judgement.

In accordance with the ruling of the Supreme Court on the transfer of the appeal for hearing by the collegium, the claimant has emphasized that the defendant is a professional cybersquatter, i.e., it uses domain names that are confusingly similar or identical to the means of individualization of the competitors for parasitic competition. In addition, according to the publicly available information from the commercial case records, the Defendant has been repeatedly brought to liability for infringement of the exclusive rights of other persons. In this regard, failure to grant injunctive reliefs has jeopardized the enforcement of the court decision.

The Collegium of the Supreme Court has reversed the decisions of the inferior courts and remitted the claim for granting injunctive reliefs for further consideration, since the courts had not taken into account the specific features and peculiarity of the dispute related to the infringement of the exclusive rights to the trade name and the trademark as a result of the illegal use of domain names and the explanations given in Clause 160 of Resolution of the Plenum of the Supreme Court No. 10 dated 23 April 2019.

Ruling of the Constitutional Court No. 2897-O dated 24 December 2020 On Refusal to Hear the Appeal from Reikanen Parts Limited Liability Company on Infringement of Its Constitutional Rights by Part 2 of Article 14.10 of the Administrative Offences Code of the Russian Federation and by Article 1487 of the Civil Code of the Russian Federation

The Constitutional Court has refused to hear the appeal from Reikanen Parts LLC (hereinafter the “Company”), where the Company has challenged the constitutional nature of the provisions of Part 2 of Article 14.10 of the Administrative Offences Code, which establishes administrative liability for manufacturing for marketing or sale of goods containing the illegal reproduction of another person’s trademark, and of Article 1487 of the Civil Code, under which the use of a trademark by any other persons with regard to the goods that have been commercialized within the Russian Federation directly by the right holder or with his consent shall not be an infringement of the exclusive right to such a trademark.

In the Company’s opinion, the challenged legal provisions do not comply with Articles 17 (Parts 2 and 3), 19 (Parts 1 and 2), 34, 35 (Parts 1 and 2), and 55 (Part 3) of the Constitution of the Russian Federation, since they make it possible to unreasonably bring to administrative liability persons repairing for sale the car spare parts, the trademark on which is applied with the consent of the right holder or by himself, and to apply the rules on exhaustion of the exclusive right to the trademark without taking into account the provisions of Article 133 “Indivisible Items” of the Civil Code as well as allow for unfair conduct of the right holder.

The Company has been brought to administrative liability under Article 14.10 of the Administrative Offences Code for selling repaired and restored car spare parts that have retained third parties’ trademarks. In addition, the Company has put these trademarks on the packaging of car spare parts along with its own trademark.

Refusing to hear the Company’s appeal, the Constitutional Court has pointed out that Part 2 of Article 14.10 of the Administrative Offences Code, which is challenged by the Company, by establishing administrative liability for manufacturing for marketing or sale of goods containing the illegal reproduction of another person’s trademark, in contradiction to the appellant’s arguments, does not imply unreasonably bringing to administrative liability and, therefore, cannot be considered as violating the appellant’s constitutional rights, in whose case the courts have established not only the presence of trademarks of other right holders on the products, but also the application of these trademarks by the appellant on his packaging; in addition, the sale by the appellant of the products containing also trademarks of other right holders under his trademark makes, by virtue of these trademarks being known, potential consumers believe that the spare parts sold by Reikanen Parts LLC are associated with these right holders.

Article 1487 of the Civil Code of the Russian Federation, which establishes equality between al-iens and nationals for exhaustion of the exclusive right to a trademark within the legislature’s discretion, cannot be considered in itself as incompatible with the requirements of the Constitution of the Russian Federation; however, it is effective in the context of the principles and norms of the Constitution of the Russian Federation and is consistent with other provisions of the civil legislation (Resolution of the Constitutional Court of the Russian Federation No. 8-P dated 13 February 2018). As it follows from the positions expressed in Resolution of the Constitutional Court of the Russian Federation No. 40-P dated 24 July 2020, the said norm assumes that a retailer is not required to conclude a licence agreement with the right holder in case of sale of the goods commercialized in the Russian Federation by the right holder or with his consent. To establish the actual infringement of the exclusive right to the trademark, the court evaluates the evidence of the origin of the goods, submitted by the parties. In this regard, this norm cannot be considered as violating the constitutional rights and freedoms of the appellant, in whose case the court of first instance has pointed out that the representatives of Reikanen Parts LLC have not been able to give explanations on the origin of the seized products, have not submitted any documents, and have just referred to the dismantling of these products from cars and their subsequent repair by the company’s employees.

Rospatent Practice

3. Well-known trademarks

143_byazanka.jpgRight Holder — Starodvorskie Kolbasy CJSC
Goods/Services — Sausage products
Date of Becoming Well-Known — 01 January 2020

143_rbull.jpgRight Holder — Red Bull GmbH, Austria
Goods/Services — Energy drinks
Date of Becoming Well-Known — 01 January 2015

143_martin.jpgRight Holder — Martin CJSC
Goods/Services — Treated sunflower seeds
Date of Becoming Well-Known — 01 January 2017

143_systema.jpgRight Holder — Joint-Stock Finance Corporation Sistema PJSC
Goods/Services — Financial investment management
Date of Becoming Well-Known — 01 January 2015

143_svoboda.jpgRight Holder — Coordination Distribution Centre EFKO-Kaskad LLC
Goods/Services — Vegetable oils, mayonnaise
Date of Becoming Well-Known — 01 February 2016

143_mir.jpgRight Holder — National Payment Card System OJSC
Goods/Services — Funds transfer in the electronic payment system; issuance of credit cards; remote banking services; debit and credit card services
Date of Becoming Well-Known — 14 July 2020

143_vita.jpgRight Holder — RONA LLC
Goods/Services — Pharmacy services in whole-sale and retail sale of medicines, veterinary, hygiene products and medical supplies
Date of Becoming Well-Known — 01 April 2016

143_samolet.jpgRight Holder — Samolet Group of Companies PJSC
Goods/Services — Real estate transactions; construction
Date of Becoming Well-Known — 10 December 2019

143_transneft.jpgRight Holder — Transneft PJSC
Goods/Services — Transportation and storage of oil and oil products
Date of Becoming Well-Known — 25 December 2019

143_tricolor.jpgRight Holder — National Satellite Company Non-public Joint Stock Company
Goods/Services — Satellite receivers; satellite television
Date of Becoming Well-Known — 20 February 2020


During the same period, Rospatent refused to recognize the following designations as well-known trademarks:

  • 143_uaz.jpgDesignation PATRIOT used by Ulyanovsk Automobile Plant for cars. The refusal was reasoned with the fact that, in all materials submitted, the designation “PATRIOT” was used together with the designations “УАЗ”, “UAZ” and the figurative designation , which were recognized as well-known trademarks in the name of the applicant. In this regard, it seems impossible to establish whether the claimed designation PATRIOT itself is known to consumers;
  • 143_ok.jpgDesignation used by O’KEY LLC for retail stores. The refusal followed a reconsideration of the application after the IP Court had reversed two previous Rospatent’s decisions to refuse to recognize this designation as a well-known mark. Rospatent reasons its refusal with the fact that it does not follow from the submitted documents that it is the claimed designation that has been actively used by the applicant in the Russian Federation, since the submitted evidence related to the designation O’KEY differently written and designed.

4. Appellations of origin

Rospatent registered the following appellations of origin:
(Number in the Register of Appellations of Origin — Appellation of Origin )

245 — IVANGOROD LAMPREY
246 — IRIKLIN BREAM
247 — NAGUTSKAYA-17
248 — MAYKOP BEER
249 — KIZLYAR KNIFE
250 — PALEKH
251 — CHUVASH EMBROIDERY
252 — BUZULUK CHEESE
255 — TSIVILSK HOP


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