Intellectual challenges: time for an IP court
Patent Court established in Russia
Russia faces several significant changes in the field of intellectual property rights protection in the coming years. These changes do not influence trademark filing and registration processes directly, but mainly affect the maintenance and protection of rights, as well as different kinds of disputes.
The Federation Council has adopted a constitutional law which formed a separate Court on Intellectual Property, also called the Patent Court, on November 29, 2011. The law was published and became into force on December 9, 2011. The new Patent Court is expected to start operating in February 2013. It is competent to handle disputes related to all IP rights except copyrights. This article concentrates only on trademark issues.
What will be changed?
The creation of the Patent Court will change the structure and competence of the Patent Office in several ways. The most interesting change concerns the future competency of the Patent Disputes Chamber, which currently decides different kind of cases at a first, and appeal, instance at the Patent Office. The most significant change in the new law is to hand over cancellation actions for trademarks due to non-use to the Patent Court.
“CANCELLATION ACTIONS AGAINST A TRADEMARK REGISTRATION DUE TO NON-USE, WHICH USED TO BE HANDLED BY THE PATENT DISPUTES CHAMBER, MUST NOW BE BROUGHT AT THE COMMERCIAL COURT AS WELL.”
The new law defines the Patent Court as a specialised commercial court which will resolve disputes involving the protection of contested or infringed rights of IP as a first-instance and cassation court. This new approach implies that IP disputes are divided into two groups: existence of rights and infringement of rights.
The first group contains appeals against examination decisions (registration of trademark), invalidation and cancellation actions, as well as appeals against decisions of antimonopoly bodies. The second group consists of trademark infringement issues, as well as company name issues. As a court of cassation, the Patent Court will consider cases decided by it as the court of first instance as well as certain cases which have been decided by the commercial courts in the first, and appeal, instances.
Further, the Patent Court will be also able to request the constitutional court to verify the constitutional compliance of a law in a case under its consideration. In addition to resolving disputes, the Patent Court will have other duties: it will study and generalise court practice and prepare suggestions on perfection of laws and other regulatory legal acts, as well as analyse court statistics.
What has already been changed?
One could assume that there will be no changes to the existing procedures until the new Patent Court begins operation. This, however, is not the case. The new law has already led to actual procedural changes to some trademark disputes which have been, speaking frankly, quite surprising.
The commercial courts will continue handling trademark infringement cases until the Patent Court starts operating. No changes are expected in this respect. Cancellation actions against a trademark registration due to non-use, which used to be handled by the Patent Disputes Chamber of the Patent Office, must now be brought at the commercial court as well.
In practice, this change means that administrative proceedings turned into court proceedings without any advance notice—almost overnight. Many trademark practitioners and owners find this particular change quite dramatic, especially as the new procedure has been implemented so rapidly.
The good thing is that cases which were filed before December 9, 2011 will be considered under administrative proceedings by the Patent Disputes Chamber. This means that pending cases will not have to be re-filed and cases will be considered according to the requirements that existed at the time of filing.
For cases filed after December 9, 2011 at the commercial court, it is expected that court proceedings will bring different perspectives to the actions. This is not at all a bad thing.
Future visions
The new specialised Patent Court will be more than welcome in Russia. The idea of a qualified court and centralised proceedings in the field of IP rights sounds promising. However, there is still long way to go. Forming new rules and practices, as well as implementing them, is not an easy task. People tend to object to change at first, but after a while change often turns out to be successful. This is what we are all looking for.
