Meeting of the Working Group on Improving IP Legislation was held at the CCI of the Russian Federation

On February 7, 2023, a meeting of the Working Group on Improving Intellectual Property Legislation and Law Enforcement Practice was held. The expert discussion was attended by members of the Intellectual Property Council, business representatives and patent attorneys.

The meeting was led by the head of the Working Group, Deputy Chairman of the Council of the CCI of the Russian Federation for Intellectual Property Sergey Zuykov, who focused the attention of the meeting participants on topical issues of judicial practice related to the similarity to the degree of confusion of designations registered by Rospatent.

Issues of the meeting:

Question 1. Establishing the similarity of trademarks in the framework of the consideration of claims for early termination of trademarks in connection with their non-use. (5:30 - 48:50)

Speaker: Sergey Zuykov, Head of the Working Group on Improving IP Legislation and Law Enforcement Practice.

​Sergey Zuykov noted that "when considering claims for early termination of trademarks due to non-use, assessing the plaintiff's interest, such a criterion as confusingly similar should not be the prerogative of the Intellectual Property Rights Court and should be established by Rospatent. When establishing the similarity to the extent of confusion by the Intellectual Property Court, in the future Rospatent is guided by these circumstances, not being able to revise it.". The participants of the working group came to the conclusion that the criteria of a person's interest in the early termination of a trademark should be less strict than now when considering such cases.

Question 2. Combating the illegal sale of counterfeit automotive components for state and municipal needs. (48:50 - 1:10:20)

Speaker: Alexander Yevgrafov, Advisor to the General Director of PJSC Kamaz.

Alexander Yevgrafov noted that a large proportion of counterfeit automotive components are sold through public procurement. The prevalence of the cost of indicators over the quality requirements during public procurement creates prerequisites for the sale of counterfeit automotive components. This is due to the fact that the regulatory framework governing such purchases lacks a set of measures to check the quality and safety of automotive components. The participants of the working group discussed the problems of determining the criteria of conformity of the product for its use under the original trademark. As a solution to the problem, the option of concluding a license agreement was proposed.

Question 3. Compensation for intellectual property infringement and determination by the court of the amount to be recovered. (1:10:20 – 2:24:45)

Speaker: Ruslan Malkov, Deputy Chairman of the Council of the CCI of the Russian Federation on Intellectual Property.

As part of the presentation, judicial practice was considered under subclause 1 clause 4 of Article 1515 of the Civil Code of the Russian Federation. Ruslan Malkov noted that the current practice of collecting compensation in double the value of the goods has a number of problems that were discussed at the meeting. The recovery of compensation for the violation of exclusive rights should correspond to the purpose of restoring the violated rights, and not enriching the rightholder, in order to avoid abuse of the right by the plaintiff.

In the discussion of the compensation case, the positions of the parties were presented by Sergey Zuykov and Anatoly Semenov, Deputy Chairman of the RSPP Committee on Intellectual Property and Creative Industries. Alexey Robinov, Deputy Chairman of the Council of the CCI of the Russian Federation on Intellectual Property, joined the discussion online.

Recording of the session: https://www.youtube.com/watch?v=PI0uTMoe_-Q

Source: Chamber of Commerce and Industry