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EUROPE, MIDDLE EAST & AFRICA: RUSSIA
FOUNDATION OF INTELLECTUAL PROPERTY COURT IN RUSSIA
Authors: Irina Anyukhina and Yulia Gurieva, ALRUD Law Firm
Following extensive development of Russian intellectual property laws, the idea of a foundation of a specialized IP court looks as a quest logical step in the process of intellectual property protection system development in Russia. In December 2011, the Court on intellectual property rights (the “Court”) was introduced into the system of arbitrazh state courts of the Russian Federation . In fact it is the first specialized court in Russia, who will consider defined kinds of disputes which require deep knowledge of Intellectual Property laws and IP specific nature.
The Court shall be formed no later than February 1, 2013. The Court will adjudicate the disputes as the court of first instance and the cassational court with the aim to simplify the process of IP cases consideration.
Jurisdiction of the Court
As the court of first instance the Court will generally adjudicate disputes connected with challenging decisions of federal executive bodies of the Russian Federation, including Russian Patent and Trademark Office.
As the court of cassational instance it will consider all claims regarding protection of intellectual property rights, adjudicated by the arbitrazh courts of the regions of the Russian Federation in first instance and by the arbitrazh appeal court within their competence.
Particularly, the Court as the court of first instance will consider the following cases:
A) on challenging regulatory legal acts of federal executive bodies which affect rights and legitimate interests of plaintiffs relating to legal protection of intellectual property;
B) on granting and termination of legal protection of intellectual property (except for copyright and related rights, topographies of integrated circuits), including:
i) challenging non – regulatory legal acts, decisions and actions (omissions) of RUPTO, Ministry of Agriculture (in relation to plants and animals varieties) as well as bodies authorized by the Russian Government to grant patents on secret inventions;
ii) challenging decisions of Federal Antimonopoly Service (the “FAS”) re recognition of competition as unfair and acts concerning acquisition of intellectual property rights to designations of goods/services and legal entities;
iii) establishment of a patent owner;
iv) invalidation of a patent or RUPTO’s decision on granting legal protection to a trademark, geographical indication and on granting intellectual rights to such a name, unless federal laws provide for another procedure;
v) trademark cancellations on the ground of non-use.
Please note that previously the Chamber of Patent Disputes of RUPTO adjudicated cases on trademark cancellations on the ground of non-use. Therefore such applications submitted prior to 8 December 2011 shall be considered by the Chamber of patent disputes of RUPTO, ones submitted after this date and till the commencement of activity of the Court shall be considered by the Arbitrazh Court of Moscow.
The Court will adjudicate as cassational court the following cases:
i. claims adjudicated by the Court in first instance;
ii. claims re protection of intellectual rights adjudicated by arbitration courts of subjects of the RF in first instance and by arbitration courts of appeal.
Also the Court will revise judicial acts resolved by it and coming into effect due to new and newly discovered facts.
The Court shall not consider the claims concerning copyright and related rights protection which fall within the scope of jurisdiction of courts of general jurisdiction (i.e. most of the copyright and related rights disputes between individuals or between individuals and legal entities).
Claims on protection of intellectual property rights involving collective management organizations fall within the jurisdiction of arbitrazh courts.
Peculiarities of Proceedings in the Court
The cases are heard by several judges or by the Presidium of the Court (at cassational instance).
Decisions of the Court will come into force immediately.
Establishment of the Court also caused introduction of new kind of participants to the case – a specialist, which was not provided by former procedural law. A specialist is person who has knowledge and competence in respective sphere of activities and will advise and give explanations within the scope qualification. As it follows from content and logic of the Court’s competence, the specialists will be the examiners- officers of the Russian PTO. It should be noted that the specialist may be involved to the case not only by the Court, but also by any arbitrazh court.
Transitional Period Before the Court Starts Its Activity
During the period of the Court’s formation the cases falling within the scope of the Court’s jurisdiction shall be handled according to the following rules:
iii) all claims filed before commencement of Court’s activity and falling within its jurisdiction shall be adjudicated by the court which has initiated the proceedings;
iv) claims falling within the jurisdiction of arbitrazh courts which has been initiated by the courts of general jurisdiction as of the date of the commencement of the Court’s activities shall be considered by the courts of general jurisdiction;
v) courts of general jurisdiction after the commencement of the Court’s activities will reject the claims concerning issues falling within the jurisdiction of the Court, which were filed before the commencement of the Court’s activities and which were not accepted for consideration by the courts as of the date of the commencement of the Court’s activities;
vi) arbitrazh courts consider cassation appeals which have been filed and have not been resolved before the commencement of the Court’s activities.
Therefore, rules on determination of the jurisdiction of the Court on intellectual property rights, arbitrazh courts and courts of general jurisdiction regarding intellectual property claims will apply after the commencement of the Court’s activity only. Prior to this date these claims will be considered by abritrazh courts and courts of general jurisdiction according to the current legislation.
Gaps in Regulation
There are definitely some gaps in the introduced legislation, which, it is supposed, will be eliminated within due course of new laws’ implementation.
It is not clear enough which court will consider claims challenging the decisions of arbitrazh courts of first instance, if they resolve a dispute after the commencement of the Court’s activities.
It is not also defined by the effective law the court where the claim against a defendant - foreign citizen who does not possess any property in Russia can be filed, for example, in situation when a trademark registration shall be appealed during the transitional period. The dispute falls within the scope of jurisdiction of Russian courts, but the choice of right court may be complicated in case a defendant is a foreigner. In such case it may be reasonable to use a legal fiction, recognizing Rospatent as the defendant under the case. Otherwise the Arbitrazh Procedural Code of the Russian Federation will need additional amendments to be introduced therein.
Creation of the Court on intellectual property rights is an important step in the development of court system in Russia allowing IP owners and authors to recourse to court of judges – specialists in the sphere.
Obviously the results of work of the Court can be evaluated only after a number of years, but Russian legal society expects that the Court will become an effective mechanism to secure protection of IPRs (especially rights in patentable inventions, software, etc.) and make the level of IPRs protection as high as it is provided by developed countries.
 The Court was established in accordance with the Federal Constitutional Law No. 4-FKZ dated 6 December 2011 “On introduction of amendments into the Federal Constitutional Law “On court system of the Russian Federation” and the Federal Constitutional Law “On courts of arbitration in the Russian Federation” in connection with establishing the Court on intellectual property rights in the system of courts of arbitration” (came into effect on December 7, 2011) and the Federal law No. 422-FZ dated December 8, 2011 “On introduction of amendments into certain legislative acts of the Russian Federation in connection with establishing the Court on intellectual property rights in the system of arbitration courts” (came into effect on December 8, 2011).