At the end of 2014, part four of the Civil Code of the Russian Federation, which deals with intellectual property, was significantly updated. Since many of the amendments were conceptual in nature, there was a need for a substantial reworking of the regulations at the level of the supervisory authority, the Russian Federal Service for Intellectual Property (Rospatent).
Rospatent prepared an extensive package of documents. Among these were administrative regulations describing in detail the internal administrative procedures, the actions that Rospatent carries out, the deadlines for them to be implemented, and the decisions taken and documents executed in the context of such procedures.
Alongside the administrative regulations a series of rules has been developed. These determine the regime under which Rospatent will deal with applicants or right owners and other interested parties. They also set out the contents needed for documents if various legally significant actions are to be performed. The set of documents includes legal regulations containing technical requirements for the execution of documents, and regulations determining the form in which the documents should be issued. The rules also stipulate the amount of information required for patents and certificates and state registers of protected IP items.
The documents of the greatest interest are those related to trademarks, collective trademarks, and well-known trademarks, as well as those governing relationships when disputes concerning IP protection are examined under an administrative procedure. This interest is due to trademarks currently being actively used to individualise the goods and services of right owners, and also in the context of such goods and services being licensed.
The regulation of relationships relating to trademarks is implemented by regulations that Rospatent adopted between 2000 and 2003.
The new legal regulations relating to trademarks have set deadlines for administrative procedures to be completed. Following on from the rules of the Russian civil code, they regulate in detail the procedure and conditions for any persons to familiarise themselves with any materials from trademark applications and for applications to be published. The new regulations have established requirements for consent letters, stating in particular that these should be subject to no time limit and be irrevocable. Further to the code, they have also added requirements for the protection of applied-for marks.
There have been updates to the current rules on Rospatent’s activity in the area of supervising and exercising control over the legal protection and use of results of IP activity created using funds appropriated from the federal budget.
"Certain amendments made to the federal law on protecting competition also directly affect Rospatent’s activity in terms of determining forms of unfair competition."
The growing interest in IP has also resulted in an increased number of disputes aimed at protecting the rights of applicants and right owners. This means there is a need to be more thorough in regulating the relationships that arise when such disputes are examined under an administrative procedure. The practice of Russia’s Court for Intellectual Rights in applying IP legislation has a substantial effect on the updated process and the contents of the new rules.
Among the new documents are rules governing the procedure and conditions for extending the effect of (1) patents, (2) certificates and (3) IP rights; and regulations covering applications for patents for inventions, as well as the registration of computer programs and databases.
There are also new rules for the termination of legal protection of various IP items on a range of grounds including:
1) Patents and certificates can be terminated early, as can their legal protection, based on a petition from a right owner; and
2) Trademarks, including well-known marks, and certificates of an appellation of origin can be terminated early because a right owner that is a legal entity is dissolved or a right owner that is an individual entrepreneur ceases to carry on business activity.
Because the Сivil Сode had been amended to change the procedure and conditions for registering a disposal of an exclusive right, the corresponding amendments were needed to the guidelines covering Rospatent. Changes were also needed to the authority’s legal regulations governing the registration of contracts and requirements for documents to be supplied.
Certain amendments made to the federal law on protecting competition also directly affect Rospatent’s activity in terms of determining forms of unfair competition. As is well known, actions that involve acquiring trademark rights in bad faith may be regarded as unfair competition and serve as a ground for invalidating its legal protection.
Valentina Orlova is head of the intellectual property and trademarks practice at Pepeliaev Group. She can be contacted at: v.orlova@pgplaw.ru
Valentina Orlova, Pepeliaev Group, Rospatent, patent, IP, rules, regulations, collective trademarks, well-known trademarks, bad faith,
