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In which intellectual property disputes is a complaint procedure required?

May 20, 2020

Legal arguments in the field of intellectual property, as well as disputes in other categories, have their own peculiarities in terms of preparing the plaintiff before going to court with a lawsuit.
Of course, any trial must be prepared before initiating it. At least you need to collect evidence, prepare a statement of claim, send these documents to the court.
At the same time, these measures are not always sufficient for the court to consider the substance of the dispute submitted to its consideration; in some cases, before applying to the court, the plaintiff is required to observe the pre-trial procedure for the settlement of the dispute, which also includes the claim procedure.
Within the meaning of clause 8 of part 2 of article 125, part 7 of article 126, clause 2 of part 1 of article 148 of the Arbitration Procedure Code of the Russian Federation, the claim procedure for resolving a dispute in judicial practice is considered as a way to restore violated rights and legitimate interests voluntarily without additional costs for paying state fees with a significant reduction in time. Such a dispute settlement procedure is aimed at its prompt resolution and serves as an additional guarantee of protection of rights.
According to part 5 of article 4 of the Arbitration Procedure Code of the Russian Federation, civil-law disputes on the recovery of funds for claims arising from contracts, other transactions, as a result of unjust enrichment, may be referred to the arbitration court after the parties take measures for pre-trial settlement after thirty calendar days from the day the claim (demand) is sent, unless otherwise specified by law or contract.
After analyzing the above norm, we can conclude that its provisions are applicable to the following disputes in the field of intellectual property:
- on debt collection or unjust enrichment under agreements on disposal of the exclusive right;
- on termination of the contract on disposal of the exclusive right (in this case, the document may be called “notice on termination of the contract”).
This conclusion follows from the fact that in accordance with clause 2 of article 1233 of the Civil Code of the Russian Federation (hereinafter – CC RF, the Code) to agreements on the disposal of the exclusive right to the result of intellectual activity or to means of individualization, including to agreements on the alienation of the exclusive right and to license (sublicense) agreements, the general provisions on obligations (Articles 307–419 of CC RF) and on the agreement (Articles 420–453 of CC RF) apply.
At the same time, the clause of the second part of Article 4 of the Arbitration Procedure Code of the Russian Federation indicates that other disputes arising from civil matters are referred to the arbitration court after observing the pre-trial procedure for resolving the dispute only if such a procedure is established by federal law or by contract.
In order to understand what kind of intellectual property disputes the pre-trial (claim) procedure for resolving the dispute is mandatory, I propose to turn to part four of the Civil Code of the Russian Federation, which enshrines the legal regulation of relations in the field of intellectual property in the Russian Federation.
Clause 5.1 of Article 1252 of the Civil Code of the Russian Federation states that in case the right holder and the infringer of the exclusive right are legal entities and (or) individual entrepreneurs and the dispute is subject to arbitration, before filing a claim for damages or payment of compensation, the rightholder must submit a claim.
A claim for damages or payment of compensation may be brought in the event of a complete or partial refusal to satisfy a claim or for not receiving a response to it within thirty days from the day the claim is submitted, unless otherwise specified by the agreement.
At the same time, I consider it important to note that if in a case of violation of the exclusive right to the results of intellectual activity or means of individualization, in which recovery of losses or compensation can be used as a way to restore the violated right, and the violator or copyright holder is an individual, the dispute in this case is subject to review in court of general jurisdiction.
As you know, when considering civil disputes in courts of general jurisdiction, the Civil Procedure Code of the Russian Federation is subject to application, which, unlike the Arbitration Procedure Code of the Russian Federation, does not establish a mandatory claim procedure for this category of disputes.

Moreover, paragraph 3 of clause 5.1. of article 1252 of the Civil Code of the Russian Federation clarifies that the mandatory claim procedure does not apply to disputes regarding the recognition of rights; on suppression of actions that violate the right or create a threat of its violation; the seizure of tangible media in which the result of intellectual activity or means of individualization is expressed; on the publication of a court decision on a violation; on withdrawal from circulation and destruction of tools, equipment or other means that are mainly used or intended to commit a violation of exclusive rights.
Also, a certain analogy of the claims procedure for dispute settlement applies to cases of early termination of legal protection of a trademark due to its non-use.
Clause 1 Article 1486 of the Civil Code of the Russian Federation provides that an interested person who believes that the copyright holder does not use the trademark in relation to all goods or a part of goods for the individualization of which the trademark is registered, sends such a copyright holder a proposal to apply to the federal executive body for intellectual property with a statement on the waiver of the right to a trademark or to conclude an agreement with an interested person on the alienation of the exclusive right to a trademark in relation to all goods s or parts of goods for the individualization of which the trademark is registered. The proposal of the interested person shall be sent to the copyright holder, as well as to the address indicated in the State Register of Trademarks or in the corresponding register provided by the international treaty of the Russian Federation.
If within two months from the day of sending the proposal of the interested person, the right holder does not file an application for waiver of the right to a trademark and does not conclude an agreement with the interested person to alienate the exclusive right to the trademark, the interested person is entitled to apply to thirty days after the specified two months court with a statement of claim on the early termination of legal protection of a trademark due to its non-use.

In accordance with paragraph 6 of clause 2 of part 4 of article 34 of the Arbitration Procedure Code of the Russian Federation, cases of disputes on the early termination of legal protection of a trademark due to its non-use as a court of first instance are considered by the Intellectual Property Rights Court.
Thus, an interested person who believes that the rightholder does not use the trademark must, before applying to the Intellectual Property Court, send a proposal to the rightholder. Moreover, such a proposal is in essence an analogue of the claim letter.
Moreover, it should be noted that the documents confirming the plaintiff's compliance with the claim or other pre-trial order are referred to the formal requirements for the composition of the documents attached to the application provided for in paragraph 1 article 126 of the Arbitration Procedure Code of the Russian Federation. These documents confirm the existence of the conditions necessary to initiate proceedings.
Failure to provide evidence, the plaintiff's compliance with the claim or other pre-trial procedure, is the basis for leaving the claim without motion in accordance with part 1 of article 128 of the Arbitration Procedure Code of the Russian Federation.
At the same time, the court also has the right to return the statement of claim without leaving it without movement if, when considering the adoption of the statement, it establishes that the plaintiff has not complied with the claim or other pre-trial procedure for resolving the dispute with the defendant, provided that such an order is mandatory by law (clause 5 of part 1 of article 129 of the Arbitration Procedure Code of the Russian Federation).
If, after accepting the claim for proceeding, the court determines that the plaintiff has not complied with the claim or other pre-trial procedure for resolving the dispute with the defendant, the court leaves the statement of claim without consideration, but this rule does not include cases when its observance is not provided for by federal law (paragraph 2 of part 1 of article 148 of the Arbitration Procedure Code of the Russian Federation).
Meanwhile, returning the statement of claim or leaving it without consideration does not deprive the plaintiff of the right to apply to the arbitration court again with a statement in the general manner after observing the claims procedure.
To summarize, I would like to state the following legal position. The mandatory pre-trial procedure for resolving a dispute is not a barrier to appeal to the court, but a way of resolving the dispute peacefully (clause I of Recommendation N R (86) 12 of the Committee of Ministers of the Council of Europe “On Measures to Prevent and Reduce Excessive Workload on Courts” (adopted on 16.09.1986 at the 399th meeting of the representatives of the ministers). The pacific settlement allows to minimise the likelihood of further contradictions between them and, in the end, reduces the strife. The pacific settlement solves the problem of promoting the establishment and development of partnership business relations (clause 1 of the resolution of the Plenum of the Supreme Arbitration Court of the Russian Federation dated 18.07.2014 No. 50 “On reconciliation of the parties in the arbitration process”).

Thus, the purpose of a mandatory pre-trial procedure for resolving a dispute is to try to resolve the dispute peacefully without involving a court or other mediators for such a settlement.
Moreover, the settlement of the dispute before the court allows in most cases not only to maintain or establish partnerships between the disputing parties, but also to minimize their costs, including for lawyers, state duty, collection of evidence and others.

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Author of article

Roman Larshin

Roman Larshin

Lawyer