Challenging the decision made by Rospatent following the consideration of the objection

Result of consideration of the objection

Article 1512 of the Civil Code of the Russian Federation establishes the grounds for challenging and invalidating the granting of legal protection to a trademark. Challenging the granting of legal protection to a trademark means challenging the decision on state registration of a trademark and the recognition of the exclusive right to the trademark based on it.

Based on Article 1513 of the Civil Code of the Russian Federation, such a challenge can be carried out by filing an objection to the Chamber for Patent Disputes, a specialized body created within Rospatent to resolve disputes related to the provision, use, protection and enforcement of rights in the field of intellectual property.

Article 1398 of the Civil Code of the Russian Federation establishes cases of recognition of a patent for an invention, utility model or industrial design as invalid. According to the meaning of paragraph 2 of this article, a patent may also be challenged by filing an objection to the Chamber for Patent Disputes.

According to the Rules for filing objections and applications and their consideration in the Patent Dispute Chamber based on the results of consideration of the objection, the Patent Dispute Chamber may make a decision:

• about his satisfaction
• on refusal to satisfy
• on termination of proceedings

If any of the parties to the administrative dispute on the consideration of objections does not agree with the decision of the Patent Dispute Chamber, paragraph 4 of Article 1513 of the Civil Code of the Russian Federation, as well as paragraph 136 of the Resolution of the Plenum of the Supreme Court of the Russian Federation of 23.04.2019 No. 10 "On the application of Part Four of the Civil Code of the Russian Federation" provides for the possibility of challenging such a decision in court.

Jurisdiction

According to Article 43.4 of the Federal Constitutional Law of 28.04.1995 No. 1-FKZ "On Arbitration Courts in the Russian Federation", cases on disputes on the granting or termination of legal protection of the results of intellectual activity and equivalent means of individualization of legal entities, goods, works, services and enterprises on challenging non-regulatory legal acts, decisions and actions (inaction) of Rospatent are subject to the jurisdiction of the Intellectual Property Court as a court of first instance.

Grounds

Article 13 of the Civil Code of the Russian Federation establishes that a non-regulatory act of a state body that does not comply with the law or other legal acts and violates the civil rights and legally protected interests of a citizen or legal entity may be declared invalid by the court.

Citizens, organizations or other persons have the right to apply to an arbitration court with a statement on the invalidation of, among other things, a decision of Rospatent, if they believe that the contested non-normative legal act does not comply with the law or other normative legal act and violates their rights and legitimate interests in the sphere of entrepreneurial and other economic activities, illegally imposes any obligations on them, creates other obstacles to the implementation of entrepreneurial and other economic activities (Article 198 of the Arbitration Procedure Code of the Russian Federation).

When considering cases challenging a decision of Rospatent, the arbitration court in a court session reviews such a decision and determines:

• its compliance with the law or other regulatory legal act;

The Intellectual Property Court, on the basis of paragraph 2 of Article 11 of the Civil Code of the Russian Federation, carries out subsequent judicial review of the administrative decision of Rospatent.

In this context, in order to carry out qualified judicial review, it is necessary that the reviewed decision be reasoned and adopted in compliance with all formal requirements. Otherwise, the objectives of the legal proceedings (in particular, judicial protection of the rights and legitimate interests of copyright holders and interested parties) cannot be fully achieved in violation of Article 2 of the Arbitration Procedure Code of the Russian Federation.

Direct assessment by the court of documents submitted with an objection, without their analysis by the authorized state body, would in fact replace the administrative powers of this body, which is not provided for in paragraph 1 of Article 1500 of the Civil Code of the Russian Federation.

A similar legal position is presented in the decisions of the Presidium of the Intellectual Property Court dated 29.01.2024 in case No. SIP-266/2023, dated 27.10.2023 in case No. SIP-70/2023, dated 28.09.2023 in case No. SIP-1031/2022, dated 22.09.2022 in case No. SIP-1124/2021.

• the presence of authority on the part of Rospatent to make the contested decision;

The powers of Rospatent to issue the contested decision are established by Article 1513 of the Civil Code of the Russian Federation and paragraph 5 of the Regulation on the Federal Service for Intellectual Property, approved by Decree of the Government of the Russian Federation of 21.03.2012 No. 218.

• whether the contested decision violates the rights and legitimate interests of the applicant in the field of entrepreneurial and other economic activities.

When filing an application to recognize the decision of Rospatent based on the results of consideration of the objection as invalid, the applicant must prove that such decision violates the rights and legitimate interests of the applicant in the field of entrepreneurial and other economic activities.

In addition, based on the provisions of paragraph 136 of Resolution No. 10, violations by Rospatent of the procedure for considering objections are also grounds for recognizing the adopted decision as invalid, provided that these violations are of a significant nature and do not allow for a comprehensive, complete and objective consideration of the said objections and applications.

Applicable Law

In accordance with the explanations set out in paragraph 27 of Resolution No. 10, when challenging decisions of Rospatent, the courts must take into account that applications for the issuance of a patent, applications for a trademark, as well as applications for an appellation of origin of goods are subject to consideration in the manner established by the legislation in force on the date of filing the application, and international applications for an invention, industrial design or trademark and converted Eurasian applications - on the date of receipt of the application by Rospatent.

At the same time, the procedure for considering relevant objections that is in effect at the time of the application for recognition of the patent as invalid, or the granting of legal protection to a trademark or appellation of origin of goods, shall be applied.

Persons involved in the case and the burden of proof

The burden of proof of the compliance of the contested decision with the law, the existence of authority to make such a decision and the circumstances that served as the basis for making the contested decision rests with Rospatent.

In this case, the filer of the objection or the right holder, if they are not the applicants challenging the decision of Rospatent, on the basis of Article 51 of the Arbitration Procedure Code of the Russian Federation, are brought in by the court as third parties who do not make independent claims regarding the subject of the dispute.

Additional evidence

In practice, there are very often situations when, during the consideration of an objection, persons, for some reason, do not provide certain evidence.

Clause 137 of Resolution No. 10 establishes that when considering cases on challenging a decision of Rospatent, the applicant of the objection or application has the right to present evidence that was not the subject of the administrative body's investigation when making the contested decision, in order to refute the conclusions of this body, without supplementing the originally submitted objection or application with new arguments (grounds). Documents supplementing the originally submitted objection or application may form the basis of an independent objection or application.

At the same time, the copyright holder cannot be deprived of the right in court, when considering a case on verifying the legality of a contested non-normative legal act, to present any arguments and evidence , including those that were not the subject of consideration in Rospatent.

In addition, both the copyright holder and the person filing the objection or application have the right to submit additional evidence on the merits of the submitted objection or application and the decision taken on its basis to refute the evidence submitted by other persons participating in the case directly to the court.

Rospatent has the right to present additional evidence on the merits of the filed objection, application and decision taken on its basis in refutation of evidence presented by other persons participating in the case.

Thus, the filer of an objection or application has the right to present evidence that was not the subject of the administrative body's examination when making the contested decision, without supplementing the originally filed objection or application with new arguments (grounds), and the right holder has the right to provide any arguments and present evidence , including those that were not the subject of consideration in Rospatent. 

Time limit for appeal

In accordance with paragraph 4 of Article 198 of the Arbitration Procedure Code of the Russian Federation, an application to challenge a decision of Rospatent may be filed with the court within three months from the day when a citizen or organization became aware of the violation of their rights and legitimate interests, unless otherwise provided by federal law. A deadline for filing an application missed for a valid reason may be reinstated by the court.

Duty

In accordance with paragraph 47 of Article 2 of the Federal Law of August 8, 2024 No. 259-FZ "On Amendments to Parts One and Two of the Tax Code of the Russian Federation and Certain Legislative Acts of the Russian Federation on Taxes and Fees", from September 8, 2024, the fee for organizations for appealing decisions of Rospatent will be 50,000 rubles, for individuals - 10,000 rubles.

Result of the challenge

Based on the results of the review of the application to challenge the decision of Rospatent, the Intellectual Property Court may make the following decisions:

• to declare the decision of Rospatent invalid and in the operative part indicate on the obligation of Rospatent to eliminate the violations of the rights and legitimate interests of the applicant within a reasonable time;
• refuse to recognize the decision of Rospatent as invalid;
• to cancel the decision of Rospatent in connection with a significant violation of the procedure for its adoption or in the presence of circumstances that cannot be eliminated at the stage of judicial appeal of the decision of Rospatent. The court has the right to oblige Rospatent to consider the relevant issue again, taking into account the court decision.
• cancel the decision of Rospatent, oblige Rospatent to restore or cancel the patent, restore or terminate the legal protection of the trademark.

In conclusion, I would like to note that when you receive a decision from Rospatent, adopted based on the results of consideration of an objection with which you do not agree, you should not immediately despair, you need to study such a decision and try to form arguments about a possible violation of the provisions of the law by Rospatent. This article examined the main points on challenging Rospatent decisions, however, in case of questions or ambiguities, you can contact lawyers who will assess the chances and also offer their services in challenging the Rospatent decision.