Judicial Consideration of Lawsuits for the Recognition of IP Rights

Ways to protect the right

The variety of ways to protect exclusive rights to intellectual property is due to the various tasks that the right holder sets for himself in order to achieve appropriate protection.

The above methods are directly listed in paragraph 1 of Article 1252 of the Civil Code of the Russian Federation. According to this article, the protection of exclusive rights to intellectual property and means of individualization is carried out by filing claims in the manner prescribed by this Code. Such claims may include:

1. Recognition of the right - filed against a person who denies or otherwise does not recognize the right, thereby infringing on the interests of the rights holder.
2. Cessation of actions violating the right or posing a threat of violation - filed against a person engaging in such actions or making necessary preparations for them, as well as against others who can stop such actions.
3. Compensation for damages - filed against a person who unlawfully uses the result of intellectual activity or means of individualization without an agreement with the rights holder (unauthorized use) or otherwise infringes on the exclusive right, causing damage, including infringing on the right to remuneration as provided for in Article 1245, Paragraph 3 of Article 1263, and Article 1326 of this Code.
4. Seizure of the material carrier - filed against the manufacturer, importer, custodian, transporter, seller, or any other distributor or unfair acquirer in accordance with Paragraph 4 of this article.
5. Publication of a court decision on the violation with an indication of the true rights holder - filed against the infringer of the exclusive right.

In practice, the situation is such that copyright holders use only the most traditional methods of protection, within the framework of which they also solve other problems - such methods include, first of all, those specified in subparagraphs 2 and 3 of paragraph 1 of Article 1252 of the Civil Code of the Russian Federation (suppression of actions that violate the right or posing a threat of its violation, as well as material claims related to the recovery of damages/compensation).

Thus, when making a claim for compensation for the unlawful use of the results of intellectual activity, the copyright holder may have other goals - recognition of him as the copyright holder of the relevant result of intellectual activity, as well as the suppression of an existing violation.

However, demands for recognition of rights may be an independent claim, even if the copyright holder has not stated any other demands.

This requirement, as follows from subparagraph 1 of paragraph 1 of Article 1252 of the Civil Code of the Russian Federation, is made to a person who denies or otherwise does not recognize the right, thereby violating the interests of the copyright holder.

At the same time, when considering cases on the recognition of intellectual rights, the legislation in force at the time the corresponding right arose is subject to application. Thus, the author of a work is determined on the basis of the legislation in force at the time of its creation; the author of an invention, utility model, industrial design, or selection achievement - on the basis of the legislation in force on the date of filing the application for the relevant patent. At the same time, the citizenship of the author is also taken into account in cases where this is important for controversial legal relations (paragraph 26 of the 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”).

Recognition of the right as an independent claim

The subject of proof for this category of case includes the presence of a certain object of intellectual property, ownership of the rights to this object, or exclusive rights to use it to the plaintiff (ruling of the Ninth Arbitration Court of Appeal dated December 26, 2022, in case No. A40-218425/2019).

In addition, as follows from the wording specified in subparagraph 1 of paragraph 1 of Article 1252 of the Civil Code of the Russian Federation, the subject of proof also includes the fact that the defendant denies or otherwise does not recognize the right, thereby violating the interests of the copyright holder (plaintiff).

In this case, the denial of the right can be expressed not only in the denial that the plaintiff has the corresponding right, or that it belongs not to the plaintiff, but to another person, but also in ignoring the corresponding copyrights.

It is worth noting that recognition of rights can be used as a method of protection not only in relation to exclusive rights but also in relation to personal non-property rights.

Thus, according to paragraph 1 of Article 1251 of the Civil Code of the Russian Federation, in the event of a violation of the author’s personal non-property rights, their protection is carried out, in particular, by recognizing the right, restoring the situation that existed before the violation of the right, suppressing actions that violate the right or create a threat of its violation, compensation for moral damage, publication of a court decision on a violation.

As follows from existing judicial practice, most often this method of protection is used along with other methods.

For example, in case No. A41-105698/2019, the Ural Construction Company KrovTrade LLC filed a claim with the Arbitration Court of the Moscow Region against the GIPROIV JSC for recognition of the plaintiff’s exclusive copyright on the results of intellectual activity, for a ban use of the plaintiff’s copyrighted objects in any form.

From the above, it follows that the use of some methods of protection does not exclude the use of other methods of protection of exclusive rights.

Thus, the requirement for recognition of the right can act as an independent and only claim, or act as an independent claim along with other requirements aimed at protecting the same result of intellectual activity.

At the same time, as stated earlier, achieving such a goal as recognition of an exclusive right can be achieved in other ways.

For example, if the plaintiff makes a demand such as recovery of compensation for violation of an exclusive right, and proceeding from the provisions of Part 1 of Article 65 of the Arbitration Procedure Code of the Russian Federation, as well as the explanations set out in paragraphs 59 - 62 of the resolution of the Plenum of the Supreme Court of the Russian Federation dated 23.04. 2019 N 10 “On the application of part four of the Civil Code of the Russian Federation”, the subject of proof includes the fact that the plaintiff has this right and the fact of its violation by the defendant.

Therefore, a claim for the recognition of the right makes sense if the recognition of the right is the plaintiff's sole objective and depends on the defendant's actions that prompted the plaintiff to file the lawsuit (for example, the grounds for filing a lawsuit significantly differ when claiming compensation—the basis is the violation of the exclusive right through its use, whereas the basis for filing a lawsuit for recognition of the right is, as previously mentioned, the denial or other non-recognition of the plaintiff's right).

Filing a lawsuit with the sole claim of recognition of the right can be an effective tool for protection if a series of disputes against a person (or persons) unlawfully using the relevant result of intellectual activity is expected to follow. In this case, another person claims to be the owner of this intellectual property. The decision in the case may be used in such a series of disputes, significantly facilitating the plaintiff's proof of the circumstances they refer to and reducing the time it takes for courts to consider these disputes.

This rule is especially relevant for disputes related to copyright.