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The IP rights environment has become very internationally-focused lately. IP owners have many opportunities to protect their IP rights globally, but enforcement of IP rights is still mainly based on national requirements and processes with country specifics and peculiarities. This is also the case in Russia.
Handling IP disputes in Russia is divided between two courts, namely the specialist IP Court located in Moscow, and commercial courts. The IP Court has very wide competence over IP matters, whereas commercial courts are mainly handling infringement actions. Although the court requirements differ case by case, there are some common practices which apply to most cases and are useful to know.
Representation at the court always requires original power of attorney as well as a trade register extract from the companies register when a legal entity is a party in the proceedings. A trade register extract must be as recent as possible (not older than one month from the date of the claim). All documents must be notarised and legalised (by an apostille).
Documents on behalf of a Russian company must be signed by the head of the company and certified by a company stamp. Any other documents relevant to the proceedings must be certified similarly. It is also important to note that all documents must be translated into Russian.
The Civil Code of the Russian Federation and the Russian Code of Arbitrazh Procedure provide for pre-trial proceedings. This means that the other party needs to be warned about the possible claim and given an opportunity to solve the matter amicably. This is an obligatory part of the process and cannot be avoided.
For example, in a cancellation action of an unused trademark, an interested party must send a written request to the owner asking for the voluntary withdrawal of the trademark fully or partially from the register, or to fully or partially assign it to the sender.
If no answer from the owner is received within two months of the request, the claimant has 30 days to file an action with the IP Court. The claimant should be prepared to proceed with the action and it is advisable to collect all the necessary documents for the court proceedings beforehand. If the claimant fails to file the action within 30 days, a new request to the trademark owner is to be sent no earlier than three months after the first one.
Notice of service
In accordance with procedural regulations the plaintiff must notify the other party about the claim. When a foreign company is the defendant and does not appear to the preliminary hearing, the court as a rule considers that the defendant has not been properly notified about the claim and thus will notify the defendant through the Ministry of Justice in accordance with the rules of the Hague Convention. This usually suspends the process for six months. When the defendant is Russian, the notice of service is usually not an issue.
Russian legislation provides for precautionary measures. However, as a rule the courts very reluctantly accept applications for such measures. Domain name disputes are an exception to this rule. In domain name disputes there is a risk that the domain name registrant will transfer the domain to another person during the trial (this can be easily and quickly done) and thus the court usually accepts the application for prohibiting the transfer of the domain to another person during the court action.
Requirements for evidence
The laws list strict requirements for the evidence in different actions. For example,
(i) the claimant must prove its interest in cancellation of an unused trademark;
(ii) the applicant must inform the grounds for precautionary measures in the application; and
(iii) a party who claims for compensation of damages must prove the actual damages with documentation.
All this is clear, but in practice there are no specific guidelines which clearly mention the acceptable evidence. This makes it difficult for the parties to fulfil these requirements.
Riikka Palmos is a European trademark attorney and senior partner at Papula-Nevinpat. She can be contacted at: email@example.com
Papula-Nevinpat, Riikka Palmos, Russian IP, evidentiary standards in Russia, trademark dispute,Russian Code of Arbitrazh Procedure, Russian Civil Code