Interim measures in disputes related to the protection of intellectual rights

Procedural legislation allows for the possibility of the court taking urgent temporary measures aimed at securing the claim or property interests of the applicant. Such measures are called interim measures and, as a general rule, are taken in civil and arbitration proceedings at the request of a person participating in the case. Interim measures may be taken at any stage of the judicial process if the court considers that failure to take them may complicate or make impossible the execution of a judicial act. The court may also issue interim measures if it concludes that this can prevent the applicant from causing significant harm.

There is an opinion among practicing lawyers that it is extremely difficult to obtain interim measures, and the measures taken can with a high probability be cancelled. These statements are not without foundation: for example, according to statistics, national arbitration courts satisfy less than 1/3 of applications for interim measures, and 3/4 of half of the measures taken are canceled by the same court after their adoption [1].

This problem is primarily related to the difficulties of proving the existence of grounds for taking interim measures in specific circumstances and is of particular relevance for disputes related to intellectual property.

In this regard, in 2015 The Supreme Court of the Russian Federation, based on the results of a generalization of legal positions, adopted a Review of judicial practice in cases related to the resolution of disputes on the protection of intellectual rights [2], which included, among other things, clarifications regarding the rules for adoption provisional measures in relevant disputes.

In addition to this document, in June of this year, the Plenum of the Supreme Court adopted a Resolution [3], in which it clarified some provisions of the legislation regulating the issues of courts taking measures to secure a claim, interim measures and preliminary protection measures.

A number of clarifications of the Plenum of Supreme Court relates to the rules for the application of procedural rules that are aimed at protecting intellectual rights, namely:

• provisions on the application by courts of preliminary interim measures for the protection of copyright and related rights on the Internet (clause 43 of the Resolution of the Supreme Court of the Russian Federation dated 01.06.2023 N 15);
• features of the adoption of interim measures in cases considered in arbitration proceedings by the Intellectual Rights Court (clauses 54-60 of the Resolution of the Supreme Court of the Russian Federation dated 01.06.2023 N 15).

At the moment, the Review dated 09.23.2015 and Resolution of the Supreme Court of the Russian Federation dated 06.01.2023 N 15 in the relevant part are the main documents that, in addition to procedural rules, need to be guided by when applying to the court with an application for interim measures or their cancellation.

We suggest focusing attention on the legal positions of the Review dated September 23, 2015 and new clarifications of the Plenum of the Supreme Court, which provide answers to the most pressing questions.

How to apply for the adoption of preliminary interim measures of protection of copyright (related rights) on the Internet

According to Art. 144.1 of the Civil Procedure Code of the Russian Federation [4], preliminary interim measures for the protection of copyright and related rights on the Internet (except for rights to photographs, etc.) are taken by the Moscow City Court upon a written application from an organization or citizen.

Such a statement must meet the requirements established by Part 1 of Art. Art. 144.1 of the Code of Civil Procedure of the Russian Federation, as well as the general requirements for the content and procedure for filing procedural documents in court, which are established by Art. 131 Code of Civil Procedure of the Russian Federation (clause 50 of the Review dated September 23, 2015).

As explained by the Plenum of the Supreme Court, in paragraph 43, clause 2 of Resolution No. 15 dated January 6, 2023, when applying to court, in addition to the application, you must submit:

• documents that prove the fact of illegal use on the Internet of the object of exclusive rights, i.e. the fact of using this object on a specific page of the site;
• documents confirming that the applicant has exclusive rights to the relevant object.

According to paragraph 55 of the clarifications of the Plenum of the Armed Forces of the Russian Federation dated April 23, 2019 No. 10 [5], the law does not limit the list of admissible evidence on the basis of which the fact of violation of intellectual rights is established. Therefore, when resolving the question of whether such a fact occurred, the court has the right to accept any means of proof that are provided for by procedural legislation.

In particular, to prove the fact of illegal use of an object of copyright (related rights) on the Internet, you can provide:

printouts of materials posted on the Internet (screenshots) made and certified by the applicant, indicating the address of the Internet page and the exact time of its receipt;

a record that records the fact of use on the Internet of a complex object of copyright or related rights (phonogram, audiovisual work, etc.). For example, this could be an audio or video recording of the full timing of the disputed object. The recording should be made using a program for capturing video from the screen, which will allow you to identify and examine all the characteristics of the object.

These clarifications follow from paragraph 3 and 4 of the Resolution of the Supreme Court of the Russian Federation dated 06/01/2023 N 15.

In an application for preliminary interim measures, you can request to restrict access not only to sites on which disputed objects are directly posted and distributed, but also to resources that contain information that provides access to them, for example, by providing download links such objects (paragraph 5 of the Resolution of the Supreme Court of the Russian Federation dated 06/01/2023 N 15).

In this case, deletion of the controversial information itself is not required, because in this case, preliminary interim measures are aimed, among other things, at preserving the existing state of relations and providing evidence (paragraph 8 of the Resolution of the Supreme Court of the Russian Federation dated June 1, 2023 N 15).

The court will refuse to take preliminary interim measures to protect copyright (related rights) on the Internet if they are aimed at protecting exclusive rights to a trademark (paragraph 6, paragraph 43 of the Resolution of the Supreme Court of the Russian Federation dated 01.06.2023 N 15).

What measures will not be taken in disputes over trademark rights?

When applying to the court with a request to take interim measures, it must be taken into account that the corresponding application must indicate the specific interim measure or measures that the applicant requests to take (clause 20 of the Resolution of the Supreme Court of the Russian Federation dated 01.06.2023 N 15). Therefore, it is important to know which interim measures will obviously not be accepted by the court.

In particular, in cases involving disputes over trademark rights, which are considered by the Intellectual Rights Court in arbitration proceedings, the Plenum of the Supreme Court of the Russian Federation noted the categories of cases and actions that cannot be taken by the court as interim measures.

So, for example, when applying to the court for interim measures in a claim for early termination of legal protection of a trademark, the court will not take the following actions as interim measures and will not prohibit Rospatent from performing the following actions:

• registration of the transfer of the exclusive right to the disputed trademark (clause 56 of the Resolution of the Supreme Court of the Russian Federation of June 1, 2023 N 15);
• registration of changes that relate to information about the registration of a trademark and are associated with a reduction in the list of goods and services for which the disputed trademark is registered (clause 57 of the Resolution of the Supreme Court of the Russian Federation dated 01.06.2023 N 15).

Also, in a dispute about early termination of trademark protection on the basis of Art. 1486 of the Civil Code of the Russian Federation [6] the court will refuse the defendant’s application for interim measures in the form of a ban on Rospatent registering a trademark based on an independent application submitted by the plaintiff (clause 59 of Resolution of the Supreme Court of the Russian Federation dated 01.06.2023 N 15).

Similarly, when considering a dispute about unfair competition related to the acquisition and use of the exclusive right to a trademark, the court will not take interim measures in the form of a ban on Rospatent to carry out administrative actions related to the transfer of the exclusive right to the disputed mark on the basis of an alienation agreement or without it (clause 60 Resolution of the Supreme Court of the Russian Federation dated 06/01/2023 N 15).

Sources:

1. Smola A.A. Current problems of application of interim measures by arbitration courts // Bulletin of the Arbitration Court of the Moscow District. 2019. N 4. P. 37 - 52
2. “Review of judicial practice in cases related to the resolution of disputes on the protection of intellectual rights” (approved by the Presidium of the Supreme Court of the Russian Federation on September 23, 2015) // SPS "ConsultantPlus"
3. Resolution of the Plenum of the Supreme Court of the Russian Federation dated 06/01/2023 N 15 “On some issues of the courts taking measures to secure a claim, interim measures and preliminary protection measures” // SPS “ConsultantPlus”
4. “Civil Procedure Code of the Russian Federation” dated November 14, 2002 N 138-FZ (as amended on June 24, 2023, as amended on July 20, 2023) // SPS “ConsultantPlus”
5. Resolution of the Plenum of the Supreme Court of the Russian Federation dated April 23, 2019 N 10 “On the application of part four of the Civil Code of the Russian Federation” // SPS “ConsultantPlus”
6. “Civil Code of the Russian Federation (Part Four)” dated December 18, 2006 N 230-FZ (as amended on June 13, 2023) (with amendments and additions, entered into force on June 29, 2023)