Interim measures regarding actions of Rospatent

In paragraph 13 of the Resolution of the Plenum of the Supreme Court of the Russian Federation dated April 23, 2019 No. 10 “On the application of part four of the Civil Code of the Russian Federation,” it is explained that in cases of protection of intellectual rights by a court or arbitration court, at any stage of the process, measures can be taken to secure a claim if there is the grounds provided for, respectively, by Article 139 of the Civil Procedure Code of the Russian Federation and Article 90 of the Arbitration Procedure Code of the Russian Federation.

At the same time, an application for interim measures in the form of prohibiting the defendant and other persons from performing certain actions, including a prohibition to the federal executive body for intellectual property (hereinafter referred to as Rospatent) to consider objections to the provision of legal protection to the results of intellectual activity and means of individualization, to perform actions for state registration and others, can be satisfied if the specified interim measures are directly related to the subject of the stated requirements and if the claim is satisfied, failure to take these very measures will complicate or make impossible the execution of the judicial act.

This article will consider in which specific cases it is necessary to take interim measures in relation to the actions of Rospatent, as well as in relation to which specific actions of Rospatent such interim measures can be taken.

The specifics of taking interim measures in cases considered in arbitration proceedings by the Court for Intellectual Rights in relation to the actions of Rospatent are provided for in paragraphs 54-60 of the Resolution of the Plenum of the Supreme Court of the Russian Federation dated 01.06.2023 No. 15 (hereinafter referred to as the Resolution) “On some issues of the adoption by courts of measures on securing a claim, interim measures and preliminary protection measures”.

First of all, this Resolution in paragraphs 54-57, 59-60 indicates six cases in which an application for interim measures in the form of a ban on Rospatent from carrying out certain actions is not subject to satisfaction:

1. Clause 54 of the Resolution.

When: when considering a case challenging a decision of Rospatent based on the results of consideration of an objection to the grant of a patent for an invention, utility model, industrial design or against the provision of legal protection to a trademark.

Action of Rospatent: prohibition of Rospatent to take actions to consider another independent objection, unless it is proven that the objections are based on coinciding circumstances.

2. Clause 55 of the Resolution.

When: when considering a case challenging the decision of Rospatent, adopted based on the results of consideration of objections against the grant of a patent, against granting legal protection to a trademark.

Action of Rospatent: suspension of the contested decision if information on the invalidation of a patent or invalid legal protection of a trademark is entered into the relevant state register.

3. Clause 56 of the Resolution.

When: when considering a case on early termination of legal protection of a trademark due to its non-use by the copyright holder.

Action of Rospatent: prohibition of Rospatent from carrying out registration actions to transfer the exclusive right to a disputed trademark (alienation of the exclusive right to a trademark).

4. Clause 57 of the Resolution.

When: when considering a case on early termination of legal protection of a trademark due to its non-use by the copyright holder.

Action of Rospatent: prohibition of Rospatent to carry out registration actions related to reducing the list of goods and services for which the disputed trademark is registered.

5. Clause 59 of the Resolution.

When: when considering a case on early termination of legal protection of a trademark due to its non-use by the copyright holder.

Action of Rospatent: prohibition of Rospatent from registering a trademark based on an independent application submitted by the plaintiff.

6. Clause 60 of the Resolution.

When: when considering a case on recognition of the defendant’s actions to acquire and use the exclusive right to a trademark as an act of unfair competition.

Action of Rospatent: prohibition of Rospatent from taking administrative actions related to the transfer of the exclusive right to a disputed trademark on the basis of an alienation agreement or without one.

As can be seen from the information presented above, paragraphs 56, 57 and 59 of the Resolution relate to cases of early termination of legal protection of a trademark due to its non-use by the copyright holder, regulated by Article 1486 of the Civil Code of the Russian Federation. As is known, according to Article 1486 of the Civil Code of the Russian Federation, the legal protection of a trademark can be terminated early in relation to all goods or part of the goods for the individualization of which the trademark is registered, due to non-use of the trademark continuously for three years. The interim measures specified in paragraph 58 regarding the actions of Rospatent may be useful in this category of cases.

In particular, for this category of cases, in addition to interim measures, the legislator also introduces the concept of preliminary interim measures. In accordance with this paragraph, preliminary interim measures in the form of a ban on Rospatent to make a decision based on the results of the examination of a designation declared as a trademark with reference to the planned filing of a claim in accordance with Article 1486 of the Civil Code of the Russian Federation for the early termination of the legal protection of a trademark of another person preventing the registration of the designation, for which the examination is carried out, can be accepted taking into account the provisions of Article 99 of the Arbitration Procedure Code of the Russian Federation only if the following set of three conditions is present:

1. An application for preliminary interim measures must concern the future plaintiff’s own applications and not affect the legal rights and interests of other persons. As is known, to recognize interest in this category of cases, it is enough to establish that the commercial interest is associated with participation in the circulation (preparation) of homogeneous, rather than identical goods and with the desire to use a designation similar to a trademark (Resolution of the Presidium of the Intellectual Rights Court dated October 21, 2019 in case No. SIP-262/2019). Thus, one evidence of the plaintiff's interest may be the plaintiff's filing of an application for a designation similar to the trademark in the early termination case.
2. In accordance with paragraph 3 of Article 1499 of the Civil Code of the Russian Federation, the administrative body sent a notification to the applicant on an application for registration of a trademark about the presence of obstacles in state registration indicating specific trademarks, that is, the list must include the trademark in respect of which it is planned to present claims for early termination of legal protection.
3. The future plaintiff has taken the measures provided for in paragraph two of paragraph 1 of Article 1486 of the Civil Code of the Russian Federation, aimed at complying with the pre-trial procedure for resolving the dispute, that is, the owner of the trademark, in respect of whom it is planned to file a claim for early termination of legal protection, has been sent a proposal from the interested party.

According to paragraph 1 of Article 1486 of the Civil Code of the Russian Federation “The proposal of an interested party may be sent to the copyright holder no earlier than three years from the date of state registration of the trademark. If, within two months from the date of sending the proposal of the interested person, the copyright holder does not submit an application for waiver of the right to the trademark and does not conclude an agreement with the interested person on the alienation of the exclusive right to the trademark, the interested person, within thirty days after the expiration of the specified two months, has the right to apply to court with a statement of claim for early termination of legal protection of a trademark due to its non-use.”

Submitting a proposal from an interested party is mandatory compliance with the pre-trial procedure for this category of cases. In addition, paragraph 58 of the Resolution also contains 2 clarifications:

• If similar conditions exist, an application for interim measures filed in a case regarding the early termination of legal protection of a trademark may be satisfied.
• Regarding the prohibition of Rospatent to make a decision based on the results of consideration of the filed objection to the decision to refuse registration of a trademark: in a case initiated on a claim for early termination of the legal protection of a trademark, an application for interim measures in the form of a prohibition on Rospatent to make a decision on the results of an objection to the decision to refuse registration of a trademark based on its own application filed by the plaintiff, in the presence of similar conditions.

In other words, when deciding on the imposition of interim measures in relation to the actions of Rospatent, it is necessary to keep in mind which document in relation to the plaintiff’s application has currently been received:

• Notification of the presence of obstacles in state registration indicating specific trademarks - in this case, preliminary interim measures may be applied

Or

• Decision to refuse registration of a trademark (subject to filing an objection to such a decision) - in this case interim measures may be applied.

Based on the above, interim measures in relation to the actions of Rospatent in cases of early termination of a trademark due to non-use can serve as an additional tool for preserving the plaintiff’s own application or trademark, subject to the conditions reflected in the Resolution.