Amendments to the Civil Code on compensations are to limit the abuse of copyright holders

The Ministry of Education and Science has submitted a bill to resolve the situation with the "serial" collection of compensation for the same violation of the rights of trademark holders.

Currently, the copyright holder can demand from the violator either compensation for damages or material compensation, in particular in the amount of two times the value of the goods with illegally placed trademark. In pursuance of the decision of the Constitutional Court (dated December 2023), it is proposed to include in the Civil Code the possibility to reduce the amount of such compensation if the violator has already paid it in a similar case, or to refuse to recover in case of affiliation of the copyright holders.

At the same time, the refusal to pay compensation does not exclude the recovery of damages from each copyright holder from the violator. In fact, the claims of several compensation are not an abuse, but the courts must take into account the good faith of the copyright holders demanding compensation, and their interdependence.

According to Sergey Zuykov, patent attorney and managing partner of Zuykov and partners, the changes are designed to curb abuse by unscrupulous copyright holders: in practice, there are quite a lot of situations when the copyright holder "splits" a claim into several lawsuits, divides trademarks into several affiliated companies. According to Yuri Yakhin, senior associate at the intellectual property practice of the law firm Melling, Voytishkin and Partners, such cases can be caused by various circumstances: from "pure abuse" to situations when "the first court decision for some reason cannot be executed, or the affiliation is not so close, and companies must protect their trademarks on their own."

Source: Kommersant