Intellectual Property law (IP) is of high value for most corporations. It is also essential for development and future growth of any company. At IPnovus Law we offer a full range of legal support in the area of IP law. In Russia we also offer our clients a cost efficient and nation-wide program for enforcement of IP law infringements (anti-piracy and anti-counterfeiting). We have a well-established network of cooperative partnership across twenty Russian regions of strategic and business importance (from Saint Petersburg to Vladivostok), as well as in CIS (Armenia, Azerbaijan, Belorussia, Kazakhstan, Ukraine, Georgia, Moldova, Kirgizstan, and Uzbekistan) and the Baltics (Lithuania, Latvia and Estonia) which ensures a nation-wide coverage.
In accordance with the Articles 1252 and 1515 of the Civil Code of the Russian Federation, the rightholder is entitled to apply to the court with the following claims re illegal usage of its trademarks:
1) On suppression of actions violating rights on trademark or creating a threat of violation of them.
2) On withdrawal from circulation and destruction of infringing goods, labels and packages with trademark at the expense of the violator. Also it is possible to claim to oblige the violator to delete the trademark from the materials used to render services.
3) On recovery of damages, the amount of which shall be proved by the rightholder. Instead of recovery of damages the rightholder is entitled to claim for payment of compensation:
- in the amount from 10000 rubles to 5 000 000 rubles (it should noted that the court may reduce the amount of claimed compensation having regard to the circumstances of the violation),
- or in the double amount of cost of the goods; - or in the double amount of cost of right to use the trademark.
4) On publication of the court’s decision on committed violation with indication of the real rightholder.
E.g. arbitrary cases А41-2731/18; А40-А27-А40-А56-А40-97859/2016; 23979/2015; 123215/2015; 55096/2014;169060/2014). А56-83807/2014;А45-9387/2016; А45-9331/2016; А55 28749/2015;
The said legal remedies re trademarks are being actively used by the rightholders while considering disputes on illegal usage of the trademarks in courts. The courts satisfy the claims mentioned above provided that due evidences were provided by the rightholder
Furthermore it should be noted that in some cases prior to filing of statement of claim to the court it is necessary to fulfill pre-trial dispute resolution procedure (in arbitration proceedings, in case of claim re recovery of damages). In such cases statement of claim may be submitted to court after 30 days since sending of relevant letter of claim to the defendant.
Also, it is necessary to notice that the consideration of cases related to illegal usage of the trademarks in the Internet has a number of peculiarities.
Thus, in accordance with the recent court practice the main evidence of violation in cases on violation of rights on trademark in the Internet is the protocol of examination of the violator’s Internet site performed by the notary. Also it is possible to perform test purchase and submit documents in it (e.g. contract, receipt, protocol of examination of material evidence performed by the notary).
And such cases administrators are primarily being sued as they are the persons who are entitled to specify the content of the site and who make decision on placement of the information on the site. However, administrator and actual seller (owner of the Internet shop) shall be sued as co-defendants if they are different persons.
Moreover, hosting provider of site may be sued as co-defendant in such cases. Meanwhile at this moment the court practice on cases where hosting provider is a co-defendant is in a formative stage and currently there is no unified position of the courts on issue whether hosting provider shall be responsible for illegal usage of the trademark on site or not.
Anyway, in case of filing claims simultaneously against several persons, courts generally determine degree of guilt of each person in violation of rights on trademarks.
It should be noted that the distribution of information on infringing goods in the Internet including distribution by offering the said goods for sale in Internet shops also violates provisions of the Federal law On information, informational technologies and protection of information. Pursuant to this federal law competent executive authorities may demand to block the relevant Internet site by judicial procedure (e.g. decision of Pervomayskiy district court of Tomsk region dated January 29, 2018 on case No. 22-23/2018; decision of Inzenskyi district court of Ulyanovsk region dated July 4, 2016 on case No. 2-667/2016; decision of Chaplyginskyi district court of Lipetsk region dated September 19, 2016 on case No. 2-789/2016; decision of Anapskyi district court of Krasnodar krai dated June 7, 2016 on case No. 2-2775/2016).
Potentially an application of the rightholder on violation of rights on trademarks on particular site may become the ground for bringing of a court action by executive authorities. However it should be noted that only blockage of sites is being considered within the frame of the said cases. The issue on payment of compensation shall be considered within the frame of the civil suit submitted on behalf of the rightholder.