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Anastasia Omelchenko

Anastasia Omelchenko

Lawyer

Office: Russia

In 2021, she graduated from Kutafin Moscow State Law University with a bachelor's degree in Jurisprudence.

In 2021, she graduated from Kutafin Moscow State Law University with a master's degree in Intellectual Property and Law of New Technologies.

Anastasia speaks English.


She has been working at Zuykov and partners since 2021 and is engaged in:


  • execution of instructions of a lawyer on issues related to objects of intellectual property, correspondence with the company's clients;
  • execution of instructions of a lawyer for the preparation of procedural documents;
  • preparation and filing for registration of licensing, sublicensing agreements, agreements on the alienation of exclusive rights;
  • agreements to amend, terminate the above agreements.


Working experience

2019-2021 - Assistant Patent Attorney at a branch of an international firm specializing in intellectual property.


Achievements

Professional development courses:

2019 - Diploma of professional retraining under the program "English translator in the field of professional communication" of Kutafin Moscow State Law University 


Certificates

2021, 2022 - Encouraged by gratitude and a certificate for active participation in the IX and X International Legal Forum "Legal Protection of Intellectual Property: Problems of Theory and Practice" (IP Forum)

Articles

Short Videos as Copyright Objects
With the rise of blogging, short videos on various social media platforms have gained significant popularity among users. These videos range from a few seconds to a few minutes. Reels, shorts, VK clips, TikTok – almost every social media platform has its own name for these short videos. Content creators fill these short videos with diverse content, from entertainment to expert opinions. From an intellectual property perspective, these short videos can be recognized as copyright objects, meaning that there are legal consequences for violating rights to such objects.Thus, the Arbitration Court of the Moscow Region, as a court of first instance, is considering a claim from one individual entrepreneur to another to stop the illegal use of a short video and to recover compensation in the amount of 500,000 rubles in case No.A41-101804/23. This article will use the above-mentioned court case as an example, in which for the first time the court of first instance sought compensation for violation of rights to a short video.First and foremost, it is essential to note that in disputes over the protection of copyright objects, according to part 1 of Article 65 of the Arbitration Procedure Code of the Russian Federation, the plaintiff must prove their ownership of exclusive rights to the work and the fact that the defendant violated these exclusive rights in one of the ways listed in paragraph 2 of Article 1270 of the Civil Code of the Russian Federation. The defendant must prove that they complied with the law when using the works.First, let's consider the fact of ownership of exclusive rights to the work in relation to short videos.Exclusive rights to the subject of copyright in relation to a short videoIn accordance with subparagraph 1 of paragraph 1 of Article of the Civil Code of the Russian Federation, works of science, literature and art are the results of intellectual activity that are granted legal protection. A variety of such works are audiovisual works, consisting of a recorded series of interconnected images, accompanied or unaccompanied by sound, intended for visual and auditory perception. Based on paragraph six of paragraph 1 of Article 1259 of the Civil Code of the Russian Federation, the objects of copyright are works, regardless of the merits and purpose of the work, as well as the method of its expression.As follows from the materials of case No. A41-101804/23, the plaintiff is the author and copyright holder of the copyrighted work - an audiovisual work (short video) “5 things to do after paying off your mortgage,” posted on the social network Instagram [1].The court considered the plaintiff's authorship of the short video to be proven based on the following evidence: script, audiovisual work performed and published directly by the plaintiff, information posted under the published audiovisual work.In addition, as explained in paragraph 109 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”, when considering a case on copyright protection by the court, one must proceed from the fact that, until it has been proven otherwise, the author of the work is considered to be the person indicated as such on the original or copy of the work or otherwise in accordance with paragraph 1 of Art. 1300 of the Civil Code of the Russian Federation (Article 1257 of the Civil Code of the Russian Federation), in the Register of Computer Programs or in the Register of Databases (clause 6 of Article 1262 of the Civil Code of the Russian Federation).By virtue of paragraph 1 of Art. 1300 of the Civil Code of the Russian Federation, copyright information is any information that identifies the work, the author or other copyright holder, or information about the conditions for use of the work, which is contained on the original or a copy of the work, attached to it, or appears in connection with a broadcast or cable broadcast or bringing such work to the public, as well as any numbers and codes containing such information.In pursuance of these provisions in case No. A41-101804/23, the plaintiff provided the following information identifying the work from a social network: the title of the work, the author and the copyright holder of the work.A short video as a composite workClaims made in defense of copyright objects included in the work are also protected by paragraphs. 2 p. 2 art. 1270 of the Civil Code of the Russian Federation: objects of copyright include composite works, that is, works that are the result of creative work in the selection or arrangement of materials.According to paragraph 2 of Article 1260 of the Civil Code of the Russian Federation, the compiler of a collection and the author of another composite work (anthology, encyclopedia, database, website, atlas or other similar work) owns the copyright for the selection or arrangement of materials they made (compilation).As explained in paragraph 80 of Resolution No. 10, it is necessary to take into account that the mere lack of novelty, uniqueness and (or) originality of the result of intellectual activity cannot indicate that such a result was not created by creative work and, therefore, is not an object copyright.In case No. A41-101804/23, a short video is considered as a composite work. In particular, the court indicated that the plaintiff’s short video is distinguished by its original presentation, author’s sequence and structure, and original author’s content.In addition, with regard to the short video, the court also specified that:“The content of the short video is not a quotation of a regulatory legal act. The plaintiff, based on his experience and professional activities, creatively determined the steps necessary to take after the mortgage was paid off. These steps are not a legal algorithm enshrined in legislation. The defendant did not provide links to legal sources that set out the content of the controversial video verbatim.”“In the audiovisual work (short video) of the plaintiff, the sixth step, which has a humorous overtones, is the proposal to take out a new mortgage, which also cannot be considered as a fixed algorithm.”Fact of violation of exclusive rights by the defendantThe provisions of paragraph 1 of Article 1270 of the Civil Code of the Russian Federation provide that the author of a work or other copyright holder has the exclusive right to use the work in accordance with Article 1229 of this Code in any form and in any way that does not contradict the law (exclusive right to a work), including the methods specified in paragraph 2 of this article. The copyright holder can dispose of the exclusive right to the work.In paragraph 89 of Resolution No. 10 it is explained that the use of works of science, literature and art by any means, both specified and not specified in subparagraphs 1 - 11 of paragraph 2 of Article 1270 of the Civil Code of the Russian Federation, regardless of whether the corresponding actions are carried out for the purpose of profit or without such a purpose, is permitted only with the consent of the author or other copyright holder, with the exception of cases where the Civil Code of the Russian Federation allows free use of the work.Illegal use of a work by any of the methods mentioned in paragraph 2 of Article 1270 of the Civil Code of the Russian Federation constitutes an independent violation of the exclusive right.The use of a work is considered to include bringing the work to the public in such a way that any person can access the work from any place and at any time of their own choice (bringing to the public) (subclause 11 of clause 2 of Article 1270 of the Civil Code of the Russian Federation).In case No. A41-101804/23 the plaintiff provided evidence of the illegal use of the video by the defendant, namely: a protocol for automated recording of information; screenshots and video recording of the violation; comparative analysis of audiovisual works.Having examined the circumstances of the case, the court found that “the defendant, without obtaining any consent, illegally copied the copyright objects included in the audiovisual work verbatim, completely copied the sequence, structure and content of the audiovisual work. The defendant illegally used the results of the plaintiff’s intellectual activity: by completely copying the text work, the sequence, structure and content of the audiovisual work (and not a separate phrase, word or legal algorithm, article from the law), and also placed similar images against the background of the text.”Having assessed the totality and interrelation of all the arguments presented and the evidence presented in the case file, the court decided to recover compensation from the defendant in the amount of 300,000 rubles out of 500,000 rubles claimed by the plaintiff. At the moment, the defendant has filed an appeal against the decision of the trial court. We will wait to see whether the appeal court will uphold the decision of the trial court.At the same time, this case is quite significant, since it is the first court case in which the court recognized a short video as an object of copyright. Content creators need to be more careful when creating their works. Copying the work of another person, including the sequence, structure and content of an audiovisual work, may serve as a basis for imposing liability, including compensation.[1] Instagram - Meta project Platforms Inc., whose activities are prohibited in Russia.
The body of evidence confirming the use of a trademark in cases of early termination due to non-use
In the interests of persons wishing to individualize goods (services) designations registered as trademarks by other persons, but not used by them, the institution of early termination of legal protection of trademarks has been introduced into Russian legislation.The institution of early termination of legal protection of a trademark, concluded in Article 1486 of the Civil Code of the Russian Federation, is provided for unused trademarks that occupy a place in the register, but are not actually used by the copyright holder. The purpose of early termination of legal protection of such trademarks is to ensure the possibility of registration and use by an interested person of an identical or similar designation for similar or homogeneous goods, works, services, and not to obtain unjustified advantages by using the reputation of a well-known brand for promotion in the market.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.A proposal from 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 claim for early termination of legal protection of a trademark due to its non-use.Based on the standards of evidence for this category of disputes, the plaintiff is obliged to prove that he is an interested party in the early termination of the legal protection of a trademark, the copyright holder of which is the defendant (clause 1 of Article 1486 of the Civil Code of the Russian Federation, Article 4 of the Arbitration Procedure Code of the Russian Federation), whereas in the latter lies the burden of proving the use of the disputed trademark in the three-year period preceding the submission of a mandatory pre-trial proposal by the interested party (clause 3 of Article 1486 of the Civil Code of the Russian Federation, Article 65 of the Arbitration Procedure Code of the Russian Federation).Civil legislation does not establish an exhaustive list of cases when the plaintiff can be recognized by the court as a person interested in the early termination of the legal protection of a trademark; the presentation by the plaintiff in confirmation of his interest of evidence of production and sale of goods not by himself, but by a person affiliated with him does not exclude the fact of recognition of the plaintiff interested in early termination of legal protection of a disputed trademark.However, regarding the use of a trademark by the copyright holder, the following should be noted.In contrast to the question of the interest of the person filing an application for non-use of a trademark, when asked about the use of a trademark by the copyright holder as a general rule (with the exception of well-known trademarks), homogeneity is not examined, since the copyright holder is obliged to provide evidence of the use of the disputed trademark in relation to each specific goods/services for which legal protection is provided.From the norms of the current legislation and the explanations of the higher court, it follows that in a case of early termination of legal protection of a trademark, the copyright holder of this trademark must prove the actual use of the controversial means of individualization when introducing the product into civil circulation, and not preparation for such use.The judicial practice of the Intellectual Property Rights Court proceeds from the fact that when assessing evidence of the actual use of a disputed designation, a set of circumstances must be established confirming the introduction into civil circulation of products marked with such a designation, including indicators of the volume of such products.For example, a low level of turnover of expensive (exclusive) products with a disputed trademark may be recognized by the court, together with other evidence, as sufficient evidence of the use of this trademark, while the same volume of turnover of less expensive products due to their qualities (more accessible to ordinary consumer due to its cost, and/or prevalence, and/or classification as household items, items of everyday use, etc.) cannot indicate that the specified product confirms the fair use by the copyright holder of its trademark, and evidence of such use cannot be considered sufficient.This approach is based on the legal position of the World Intellectual Property Organization, which states that the use of trademarks must be made public, that is, goods must be offered for sale through normal commercial channels. In this case, the use must be actual; nominal use is not enough.For example, in case No. SIP-1078/2020, the fact of use of the disputed trademark by the copyright holder (another person with the consent of the copyright holder) when labeling only 750 bottles of beer in a three-year period, taking into account the nature of the product, is symbolic (imaginary).The conclusion about the imaginary (symbolic) use of the disputed trademark was made by the court on the basis of an analysis of the documents submitted to the case materials, from which the volumes of products introduced by the copyright holder into civil circulation during the disputed three-year period are discerned.On the one hand, the legislation does not require the copyright holder to disclose all of its business transactions during the period under study relating to the use of the disputed designation; on the other hand, the symbolic use of a trademark (only for the purpose of maintaining its legal protection) cannot serve as a basis for maintaining the exclusive right to it.The issue of imaginary, nominal, symbolic use of a trademark relates to the assessment of the factual circumstances of the case and must be declared in the court of first instance. It is this approach that allows the court of first instance to comply with the adversarial principle of the arbitration process and the procedural rights of persons participating in the case: both the plaintiff’s right to ask the court to examine the evidence presented by the defendant for the symbolism of the use of the trademark, and the defendant’s right to submit additional documents confirming other volumes of input of goods, marked with a disputed trademark, in civil circulation during the disputed period.Based on the above, in cases of early termination of legal protection of a trademark due to non-use, it is necessary, among other things, to take into account the totality of circumstances confirming the introduction into civil circulation of products marked with such a designation, including indicators of the volume of such products. If the court establishes the symbolic (imaginary) use of a trademark by the copyright holder only for the purpose of maintaining its legal protection, this circumstance may serve as a basis for invalidating the legal protection of the trademark.
Why do you need to deposit your work?
Russian intellectual property legislation does not establish the author's obligation to register copyright. At the same time, you can take care in advance of measures to secure rights, which can help in the event of a controversial situation.Since 1995 the Russian Federation has become a full participant in the Berne Convention for the Protection of Literary and Artistic Works of 09.09.1886, in order to develop copyright, the participating countries of this convention mutually recognize in their territories the copyrights of citizens and organizations of other signatories of this international agreement. In accordance with Article 5 of the Berne Convention for the Protection of Literary and Artistic Works, the enjoyment and exercise of rights in a work are not subject to any formalities; such use and exercise are independent of the existence of protection in the country of origin of the work.According to Article 1259 of the Civil Code of the Russian Federation, copyright in a work initially arises with its author from the moment the work is created in an objective form and does not require mandatory registration. From the moment the work is created, the author can dispose of it in any way, as well as protect the rights to the work. When publishing a work, it is recommended to indicate the copyright symbol ©, the name of the author and the year of creation of the work.Paragraph 3 of the above article clearly indicates that copyright extends to both published and unpublished works expressed in any objective form, including written, oral (in the form of public utterance, public performance and other similar form), in the form of an image, in the form of a sound or video recording, in a volumetric-spatial form. In accordance with Article 1257 of the Civil Code of the Russian Federation, the author of a work of science, literature or art is recognized as the citizen whose creative work created it. The person indicated as the author on the original or copy of the work or in any other way is considered its author, unless otherwise proven.In paragraph 109 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 when the court considers a case on copyright protection, one must proceed from the fact that, until otherwise proven, the author of the work is considered to be the person indicated as such on the original or copy of the work or otherwise in accordance with paragraph 1 of Article 1300 of the Civil Code of the Russian Federation (Article 1257 of the Civil Code of the Russian Federation), in the Register of Computer Programs or in the Register of Databases (clause 6 Article 1262 of the Civil Code of the Russian Federation).At the same time, the issue of authorship of the work can be considered by the arbitration court as part of the issue of whether the plaintiff has the right to claim (Resolution of the Presidium of the Supreme Arbitration Court of the Russian Federation dated February 22, 2011 No. 9095/10).Thus, the Civil Code of the Russian Federation provides for the emergence of a presumption of authorship if a person is indicated as an author on a copy of a work or in the Register of computer programs or databases. Other sources confirming the presumption of authorship have not been established by the Civil Code of the Russian Federation.Copyright in a work arises due to the fact of the creation of an object that meets the conditions of protectability: it is the result of the creative work of the author and expressed in an objective form. Taking this into account, only evidence that confirms the creation of a work by a specific person can establish the authorship of a specific person (for example, witness testimony, publications, drafts, evidence based on establishing the author’s creative style, etc.).One of the measures for fixing rights to an unpublished work is deposition. As a result of this procedure, the applicant receives a certificate stating that as of a certain date (the filing date) he is the owner of the exclusive right to the work, and the author of the claimed work is also indicated, if it is another person. Deposition is not a mandatory procedure, but it is recommended to deposit the work, so in the case of future copyright protection, the deposit certificate is one of the proofs of the existence of the right to the work for the court.Until 2018, the deposit of copyright objects was carried out by the Russian Copyright Society (RAO). Since 2018, RAO has transferred its authority to provide works deposit services to its official partners - services specializing in online copyright registration: JSC National Register of Intellectual Property (n'RIS) and LLC Aireg (Intellectual Copyright Registrar IREG). In addition, other organizations also deposit works.The list of works that can be deposited is quite extensive - including, but not limited to: stories, novellas, novels, poetic works; Internet sites, author's descriptions of games, quizzes, lotteries, descriptions and scripts for competitions, musical works with or without text, literary and publishing projects; articles, brochures, scientific works, manuscripts of scientific developments, manuscripts of textbooks and teaching aids, manuscripts of various methods and teaching aids in various fields of science, including learning, teaching; catalogues, dictionaries, encyclopedias and other composite works, works of painting, sculpture, design, graphics, comics, works of architecture, photographic works, architectural and design projects, geological, geographical and other maps and plans, audiovisual works - films, television programs and film , videos, clips and so on.The deposition procedure itself involves placing a file with a work in a secure digital cell, to which third parties do not have access. The author is issued a certificate of deposition, which indicates the date and time the object was loaded into the cell, and also records authorship of the object (until proven otherwise).At the same time, in the decisions of the Intellectual Rights Court dated November 29, 2022 No. S01-1810/2022 in case No. A45-19244/2021, dated June 22, 2021 No. S01-842/2021 in case No. A60-72170/2019, dated March 19 .2021 No. S01-191/2021 in case No. A41-51614/2019 it is stated that the deposit of a work is a voluntary procedure not provided for by law, with which the law does not associate the occurrence of any consequences; depositing only confirms the existence at a certain point in time of a copy of a certain work.The fact of depositing a work is not associated with the presumption established by Article 1257 of the Civil Code of the Russian Federation, according to which the person indicated as the author on the original or copy of the work or otherwise in accordance with paragraph 1 of Article 1300 of the Civil Code of the Russian Federation is considered its author, unless otherwise proven.A similar legal position is set out in the ruling of the Supreme Court of the Russian Federation dated September 17, 2020 in case No. 305-ES20-8198.When deciding to deposit a work, the following circumstances must be kept in mind. 1. Obtaining a certificate indicating the date and author of the work (until proven otherwise). Since the Russian Federation has become a full party to the Berne Convention for the Protection of Literary and Artistic Works, the certificate of deposit can be used in copyright disputes in other countries that are parties to this convention. 2. The certificate of deposit may be additional evidence of the right to the work in the event of a controversial situation. 3. Depositing a work can be considered as a method of pre-trial protection in the event of possible claims from other persons, as well as when the author or the copyright holder himself makes claims against other persons who illegally use the work. 4. Depositing a work can be considered as a convenient way of fixing rights in the event that it is necessary to alienate the exclusive right to a work or to provide the right to use such a work under a license agreement. Thus, the fact of depositing works does not assign any rights to the person who made such deposit, but is an additional measure of fixing copyright in the work. The implementation of this procedure remains entirely at the discretion of the author or copyright holder.
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: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.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.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 appliedOrDecision 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.
Use of an illustration without consent of the copyright holder
Now almost any information is accompanied by an illustration. Reception of visualization is associated primarily with the peculiarity of human perception: we receive 80% of information through vision. However, you cannot simply take any picture you like and use it in your material - you can violate the rights of another person and, as a result, incur liability.In accordance with subparagraph 1 of paragraph 1 of Article 1225 of the Civil Code of the Russian Federation (hereinafter referred to as the “CC RF”), works of science, literature and art are the results of intellectual activity, which are granted legal protection. On the basis of paragraph six of clause 1 of article 1259 of the Civil Code of the Russian Federation, works of science, literature and art are objects of copyright, regardless of the merits and purpose of the work, as well as the way it is expressed. To recognize the result of intellectual activity as an object of copyright, it is necessary that it meet two main criteria for eligibility: the creative nature of the work and expression in an objective form.The illustration itself is a work of fine art that explains any text. Thus, the creative embodiment of such an image creates an object of copyright.By virtue of paragraph 1 of Article 1257 of the Civil Code of the Russian Federation, the citizen whose creative work it was created is recognized as the author of a work. From the moment the illustration is created, the author has exclusive rights, personal non-property and other rights. Personal non-property rights are inalienable and non-transferable, the waiver of such rights is null and void. With exclusive rights, the situation is different.The author of the work or other copyright holder has the exclusive right to use the work in accordance with Article 1229 of the Civil Code of the Russian Federation in any form and in any way that does not contradict the law. The right holder may dispose of the exclusive right to the work.In paragraph 89 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” (hereinafter referred to as “Resolution No. 10”), it is explained that the use of a work of science, literature and art by any means, regardless of whether whether the relevant actions are performed for the purpose of making a profit or without such a purpose, is allowed only with the consent of the author or other right holder, except for cases when the Civil Code of the Russian Federation allows free use of the work. The illegal use of a work by each of the methods mentioned in paragraph 2 of Article 1270 of the Civil Code of the Russian Federation constitutes an independent violation of the exclusive right. Thus, in accordance with the above article, the use of a work will be, for example, the distribution of the work by selling it, the processing of the work or bringing the work to the public. In para. 2 clause 97 of Decree No. 10 states that a violation of the exclusive right to a work is the production of one copy of the work or more, carried out from a counterfeit copy or with unlawful communication to the public (including in case of illegal placement on the Internet).At the same time, the use of the result of intellectual activity (including its use in the ways provided for by the Civil Code of the Russian Federation), if such use is carried out without the consent of the copyright holder, is illegal and entails liability established by the Civil Code of the Russian Federation, other laws, except for cases when the use of the result of intellectual activity by persons other than the right holder, without his consent is allowed by the Civil Code of the Russian Federation.Based on the above rules of law, it follows that other persons cannot use the corresponding result of intellectual activity without the consent of the copyright holder, except as provided for by the Civil Code of the Russian Federation. For example, the use of your illustration on a website on the Internet will be bringing the illustration to the public and without your consent is also a violation.According to Russian legislation, the illegal use of intellectual property objects entails, among other things, civil, administrative and criminal liability.Subparagraph 3 of paragraph 1 of Article 1252 of the Civil Code of the Russian Federation provides that the protection of exclusive rights to the results of intellectual activity and to means of individualization is carried out, in particular, by presenting, in the manner prescribed by the Civil Code of the Russian Federation, a claim for damages - to a person who illegally used the result of intellectual activity or a means of individualization without concluding an agreement with the right holder (non-contractual use) or otherwise violating his exclusive right and causing damage to him.In accordance with paragraph 3 of Article 1252 of the Civil Code of the Russian Federation, in the cases provided for by the Civil Code of the Russian Federation for certain types of results of intellectual activity or means of individualization, in case of violation of an exclusive right, the right holder has the right, instead of compensation for losses, to demand compensation from the violator for violation of this right. Compensation is subject to recovery when the fact of the offense is proven. At the same time, the right holder who applied for the protection of the right is exempted from proving the amount of losses caused to him. The lack of guilt of the infringer does not relieve him of the obligation to stop the violation of intellectual property rights, and also does not exclude the application of measures against the infringer aimed at protecting such rights.According to Art. 1301 of the Civil Code of the Russian Federation in cases of violation of the exclusive right to a work, the author or other copyright holder, along with the use of other applicable methods of protection and liability measures established by Articles 1250, 1252 and 1253 of the Civil Code of the Russian Federation, has the right in accordance with paragraph 3 of Art. 1252 of the Civil Code of the Russian Federation to demand, at his choice, from the violator, instead of compensation for losses, payment of compensation in the amount of ten thousand rubles to five million rubles, determined at the discretion of the court; at twice the cost of counterfeit copies of the work, or at twice the cost of the right to use the work, determined on the basis of the price that, under comparable circumstances, is usually charged for the lawful use of the work in the way that the infringer used.It should also be noted that before going to court, there is a special requirement to file a claim if the right holder and the infringer of the exclusive right are legal entities and (or) individual entrepreneurs and the dispute is subject to arbitration (clause 5.1 of Art. 1252 of the Civil Code of the Russian Federation).At the same time, if the infringer uses a recycled illustration, that is, an illustration created on the basis of an illustration of the copyright holder without his permission, this action in itself constitutes a violation of the exclusive right to the work, regardless of whether the person using the reworked work is the person who carried out the processing (paragraph 2 point 91 of Decree No. 10).According to paragraph 95 of Decree No. 10, when considering cases of violation of the exclusive right to a work by using its processing (subparagraph 9 of paragraph 2 of Article 1270 of the Civil Code of the Russian Federation), in order to satisfy the stated requirements, it must be established that one work was created on the basis of another. To establish whether the created work is a reworking of a previously created work or the result of the author's independent creative work, an expert examination may be appointed.Thus, before using an illustration, it is necessary to check the copyright for such a work. Without the permission of the author, images can be used in several cases (Article 1274 of the Civil Code of the Russian Federation):- for private purposes;- when creating caricatures and parodies, that is, the processing of a work for humorous purposes.- for citation for scientific, polemical, critical, informational, educational purposes.Perhaps already at the stage of pre-trial settlement of the dispute, the copyright holder will be able to resolve the problem with the violator through negotiations: the violator can remove the illegally used illustration or offer the copyright holder to use the illustration, for example, under a license agreement for a certain fee. If the claims are not eliminated, the copyright holder may apply for the protection of his rights in court.Thus, as part of the ongoing monitoring to identify violations of the copyright holder's rights to intellectual property objects, it became known that on sites on the Internet, without the permission of the copyright holder, illustrations are used, the exclusive rights to which belong to the Zuykov and Partners. These illustrations are used by the company to accompany the texts of informational articles and other information on its own website.Having fixed these violations, Zuykov and Partners sent letters of complaint to the violators with demands to remove the illustration, otherwise the copyright holder would have turned to judicial remedies.According to the results of the ongoing monitoring, the company Zuykov and Partners found more than fifty violations, which were eliminated by the violators voluntarily in the complaint procedure.
Trademark use in advertising in Russia
Advertising plays an important role in promoting goods and services. It is difficult to imagine an advertisement that would not use a designation that serves to individualize goods, work performed or services provided. In other words, the attention of the consumer is increasingly focused on the trademark or service mark. In addition, the Information Letter of the Presidium of the Supreme Arbitration Court of the Russian Federation of December 25, 1998 No. 37 states that in order to maintain interest in the product, it is not necessary to show the product itself, but rather the image of the distinctive elements (including the trademark) that were used in advertising this product. Let us consider in more detail in which cases the use of a trademark (service mark) in advertising is legal, and in which cases liability may be provided for this action.When considering this issue, it is necessary to refer not only to the law on intellectual property, but also to the law on advertising.So, the general requirement for advertising is established by Art. 5 of the Federal Law of March 13, 2006 No. 38-FZ "On Advertising" (hereinafter referred to as the "Law on Advertising"), which describes the criteria for classifying advertising as unfair and unreliable. So, for example, advertising is recognized as unfair if it contains incorrect comparisons of the advertised product with goods in circulation that are produced by other manufacturers or sold by other sellers. Advertising is unreliable when it contains information that does not correspond to reality about the advantages of the advertised product over those produced by other manufacturers or sold by other sellers. In order to protect minors from abuse of their trust and lack of experience, Art. 6 of the Advertising Law also establishes certain restrictions (for example, advertising does not allow discrediting parents and educators, undermining the confidence of minors in them). Art. 7 of the Law on Advertising fixes the objects of advertising, advertising of which is not allowed - narcotic drugs, explosives and materials (with the exception of pyrotechnic products), tobacco, etc.Violation of the legislation of the Russian Federation on advertising entails liability in accordance with civil law. In addition, persons whose rights and interests have been violated as a result of the dissemination of improper advertising have the right to apply in accordance with the established procedure to a court or arbitration court, including claims for damages, including lost profits, for compensation for harm caused to the health of individuals and (or) property of individuals or legal entities, on compensation for moral damage, on public refutation of unreliable advertising (counter-advertising) (Part 2, Article 38 of the Law on Advertising).In addition, in Part 2 of Art. 3 of the Federal Law "On the State Language of the Russian Federation" specifies the procedure for using texts in a foreign language in advertising. By virtue of this norm, the use of foreign words and expressions in advertising is allowed if at the same time their identical translation into Russian is present in the advertisement.In accordance with sub. 5 p. 2 art. 1484 of the Civil Code of the Russian Federation, “The exclusive right to a trademark may be exercised to individualize goods, works or services in respect of which the trademark is registered, in particular by placing the trademark in offers for the sale of goods, about the performance of work, the provision of services, as well as in announcements, on signs and in advertising." Consequently, a person who is the owner of the exclusive right to a trademark may use the trademark in advertising to individualize exactly those goods in respect of which the trademark is registered, without any specific conditions, observing the requirements established by advertising legislation.Based on par. 3 p. 1 art. 1229 of the Civil Code, “Other persons may not use the corresponding result of intellectual activity or means of individualization without the consent of the right holder, except as provided for by the Civil Code of the Russian Federation. The use of the result of intellectual activity or means of individualization, if such use is carried out without the consent of the copyright holder, is illegal and entails liability established by the Civil Code of the Russian Federation, other laws, except in cases where the use of the result of intellectual activity or means of individualization by persons other than the right holder, without his consent permitted by the Civil Code of the Russian Federation.”. Therefore, as a general rule, a trademark owned by another person cannot be used in advertising without the permission of the trademark owner.At the same time, the trademark owner may grant the right to use the trademark on the basis of the conclusion of a license agreement or a commercial concession agreement. It is important that, in accordance with Art. 1024 and Art.1489 of the Civil Code, one of the essential conditions of these agreements is the definition of methods of use. If a person intends to use someone else's trademark in advertising, it is necessary to determine the method of use as placement of a trademark in offers to sell goods, perform work, provide services, as well as in advertisements, on signs and in advertising.In addition, the Ruling of the Intellectual Property Rights Court dated April 19, 2016 No. C01-230/2016 in case No. A50-17408/2015 states that the provisions of the current legislation do not restrict the right holder in the ability to dispose of his exclusive right by providing another person with a simple consent to use trademark without state registration of granting the right to use it (clause 1 of article 1229, clause 3 of article 1484 of the Civil Code of the Russian Federation). Thus, the use of a trademark in advertising can be granted by the copyright holder on the basis of a letter of consent.In cases where a license agreement or a commercial concession agreement for granting the right to use the trademark in advertising has not been concluded with the trademark owner, and the copyright holder has not provided a letter of consent for such use, the use of the trademark in this case is not allowed.So, according to paragraph 1 of Art. 1484 of the Civil Code of the Russian Federation, the person in whose name the trademark is registered (right holder) has the exclusive right to use the trademark in any way that does not contradict the law (exclusive right to the trademark). No one has the right to use, without the permission of the right holder, designations similar to his trademark in relation to goods for the individualization of which the trademark is registered, or homogeneous goods, if as a result of such use there is a possibility of confusion (clause 3 of article 1484 of the Civil Code of the Russian Federation).Art. 1515 of the Civil Code of the Russian Federation provides for liability for the illegal use of a trademark. In particular, paragraphs 2 and 3 of the above article provide that the right holder has the right to demand the withdrawal from circulation and destruction at the expense of the infringer of counterfeit goods, labels, packaging of goods on which an illegally used trademark or a confusingly similar designation is placed. In addition, a person who infringes the exclusive right to a trademark in the performance of work or the provision of services is obliged to remove the trademark or a sign confusingly similar to it from the materials that accompany the performance of such work or the provision of services, including from documentation, advertising, signage.Among other things, the use of someone else's trademark or a confusingly similar trademark may result in financial losses: compensation for damages on the basis of paragraph 3 of Art. 1252 of the Civil Code of the Russian Federation or the payment of compensation on the basis of sub. 1 p. 4 art. 1515 of the Civil Code of the Russian Federation - in the amount of ten thousand rubles to five million rubles, determined at the discretion of the court.Thus, in case No. A41-5137/2008, the LOUIS VUITTON MALLETIER company filed a claim to recover monetary compensation from the defendants for the illegal use of a figurative trademark in the form of stylized flowers in a commercial for Sokos juice. The goods (suitcases, bags) with the images of stylized flowers were displayed, confusingly similar to the figurative trademark of the plaintiff, without the consent of the trademark owner. By the decision of the court of appeal, left unchanged by the court of cassation, monetary compensation in the amount of 100,000 rubles each was recovered from four defendants. At the same time, the court noted that the use of suitcases and bags in the commercial could mislead advertising consumers about the advertised product itself and cause an associative array with accessories and plaintiff's goods. In addition, the advertising of any product (including the indirect use of a trademark in advertising) must presuppose the existence of legal grounds for the use of the corresponding trademark.At the same time, in accordance with Art. 1487 of the Civil Code the use of trademarks in relation to goods put into circulation on the territory of the Russian Federation by the right holder himself or with his consent, is not read as a violation of the exclusive right to a trademark. Thus, in case No. A35-8325/2015, KAMAZ PJC applied to the Kursk Region Arbitration Court to recover compensation for the illegal use of trademarks in the amount of 1,500,000 rubles, motivating the claim by the fact that TD Auto Resource, without the agreement illegally used trademarks in the promotion of automotive parts, which violated the exclusive rights of the KAMAZ company to trademarks. The court, refusing to satisfy the claims, indicated that the indication of the verbal elements “KAMAZ" in the advertising catalog and on the Internet is a way of offering for sale original products introduced into civil circulation with the consent of the trademark owner, and therefore does not may be considered illegal use of these trademarks.Thus, when creating advertising material, it is necessary to comply not only with the requirements of advertising legislation, but also with the legislation on intellectual property.Originally published in Trademark Lawyer Magazine
Ways to protect a trademark in case of illegal use in domain name
The issue of the relationship between a trademark and a domain name has been repeatedly considered by many experts in the field of intellectual property. It is obvious that the legal regime of a trademark and a domain name are different, including because, unlike a domain name, a trademark in accordance with Art. 1225 of the Civil Code of the Russian Federation is granted legal protection as a means of individualization. In addition, in accordance with subparagraph 5 of paragraph 2 of Article 1484 of the Civil Code of the Russian Federation, one of the ways to use the exclusive right to a trademark, among other things, is to place a trademark on the Internet, including in a domain name and with other addressing methods. Thus, in case of illegal use of a trademark in a domain name, the trademark owner has the right to protect his exclusive right. Consider methods for illegal use of a trademark in a domain name.In accordance with Russian law, a violation of the exclusive right to a trademark is the actual use of a domain name that is identical or confusingly similar to a trademark in relation to goods similar to those in respect of which this trademark has been granted legal protection, without the consent of the trademark owner. The requirement to stop the violation, which is expressed in the illegal use of domain names that are identical or confusingly similar to a trademark, can be stated in the form of a requirement to prohibit the use of a domain name in a certain way in a judicial proceeding. When considering this category of disputes, the court takes into account various circumstances: the status of the trademark owner, the use by the alleged infringer of a trademark/designation confusingly similar to a domain name without legal grounds, the repeated violation.Thus, in case No. A40-63506/2020, the Moscow Arbitration Court satisfied the requirements to prohibit the use of a domain name, to oblige to cancel the registration of a domain name, and to recover compensation in the amount of 100,000 rubles (the decision of the court of first instance was left unchanged by the appellate and cassation instances). The domains in dispute in this case were word designations that were similar to the plaintiff's trademarks. The similar nature of services for which trademarks are registered and services for which domains are used was also taken into account. The court found that the defendants unlawfully (without the consent of the copyright holder) use the trademarks owned by the plaintiff in the disputed domain names.As follows from the systematic interpretation of the norms of international law and the provisions of the Civil Code of the Russian Federation, the national principle of legal protection is applied to trademarks, assuming that exclusive rights to these intellectual property objects registered in the territory of the Russian Federation are recognized and subject to legal protection within the established boundaries of this state. At the same time, in disputes over domain names that are identical or confusingly similar to trademarks, trade names, the court, when determining the circumstances of the use (administration, delegation and other actions) of domain names, may use the provisions formulated in the Uniform Dispute Resolution Policy on UDRP domain names (UDRP - Uniform Domain Name Dispute Resolution Policy), approved on October 24, 1999 by the ICANN Assigned Domain Names and IP Numbers Corporation (hereinafter referred to as the “Policy”).However, in addition to the judicial procedure, there is an administrative procedure for protecting a trademark in case of illegal use in a domain name, namely, the consideration of domain disputes in specialized international arbitration centers in accordance with the UDRP Policy. Such practices are governed by the aforementioned Policy, the Uniform Domain Name Dispute Resolution Rules adopted on September 28, 2013 by ICANN Corporation of Domain Names and IP Addresses and effective July 31, 2015 (hereinafter referred to as the "Rules") and the Supplementary Rules for Resolution domain name disputes effective July 31, 2015.There are currently six entities authorized by ICANN to resolve domain disputes under the UDRP: Arab Center for Domain Name Dispute Resolution (ACDR); Asian Domain Name Dispute Resolution Center (ADNDRC); Canadian International Domain Name Dispute Resolution Center (CIIDRC); Czech Court of Arbitration, Arbitration Center for Internet Disputes; National Arbitration Forum (USA); World Intellectual Property Organization Center for Arbitration and Mediation (WIPO Center).This article will discuss the specifics of administrative proceedings in relation to domain names in the WIPO Arbitration and Mediation Center.Pursuant to paragraph 5 of the Policy, an individual may initiate administrative proceedings before a WIPO Center if (i) the domain name is identical or confusingly similar to a trademark or service mark to which the applicant has rights; (ii) the infringer has no rights or legitimate interests in the domain name; (iii) the domain name has been registered and is being used in bad faith. The subject of such a complaint may be one or more domains, the alleged administrators of which are one person. In addition, the applicant may also indicate several trademarks on the basis of which the claim is filed ((viii), (b), 3 of the Policy).If the first (top) level domain is international (for example, .com , .net) or generic (for example, .aero , .biz , .name) , then dispute resolution is carried out using administrative procedures developed by WIPO and ICANN in accordance with the procedure UDRP. If the dispute concerns the Russian national domain zone (.RU , .SU, .РФ, as well as top-level domains, which are managed by legal entities registered in the Russian Federation, which are registered owners of databases of these domains in international organizations for the distribution of network addresses and domain names [1]), in which case the dispute is subject to consideration by a Russian court.The process of administrative resolution of domain disputes by the WIPO Center is the submission by the applicant of a complaint to the WIPO Center by any individual or legal entity in electronic form. The complaint is then registered on the WIPO website, a case number is assigned, and a legal affairs manager is appointed to handle correspondence between the parties to the dispute. The commencement of the administrative proceedings will be the date on which the WIPO Center sends the complaint to the respondent. After receiving a response to the complaint from the defendant, an administrative commission is appointed and the arbitrator / arbitrators consider the dispute that has arisen.If the submitted complaint complies with the formal requirements, the legal affairs manager informs the complainant and sends a request to the registrar of the disputed domain name to obtain (in the case when information about the domain name administrator is not known) or confirm information about the domain name administrator. This obligation of the WIPO Center is an indisputable advantage of the administrative procedure, as it significantly saves the applicant's costs. If the filed complaint does not meet the formal requirements, as well as in case of obtaining information about the domain name administrator, if they were not known, the legal affairs manager offers the applicant to supplement / eliminate the violations in the filed complaint within a period not exceeding five calendar days. If during this period the applicant does not eliminate the proposed obstacles within five days, the complaint will be considered withdrawn.It is also convenient for the applicant to choose the language in which the administrative proceedings will be conducted. In accordance with paragraph 11 of the Rules, unless the parties agree otherwise, the default language of proceedings is the language of the domain name registration agreement, provided that the panel may determine otherwise. However, in some cases it may be necessary to use a language other than the language of the registration agreement. Such cases include: (i) evidence that the defendant will not be able to understand the language of the complaint; (ii) the language/graphics of the domain name, in particular if it matches the applicant's mark language; (iii) any content on the web page under the disputed domain name; (iv) previous cases involving the defendant in a particular language; (v) correspondence between the parties; (vi) potential unfairness or undue delay in the plaintiff's translation of the complaint; (vii) evidence of other domain names registered to the applicant, used or corresponding to a particular language, (viii) in cases involving multiple domain names.In my opinion, one of the most interesting features of the administrative review by the WIPO Center is that the applicant and the respondent are free to appoint an arbitrator of their choice. When filing a complaint, the applicant has the right to choose the number of arbitrators who will consider the dispute: one or three. Moreover, if the applicant chooses three arbitrators, he can also nominate three candidates from the list of members of candidate arbitrators of WIPO, one of whom will be selected by the WIPO Center to consider the dispute ((iv), (b), 3 of the Policy). If the applicant in the complaint indicates the consideration of the dispute by one arbitrator, and the defendant insists on the consideration of the dispute by three arbitrators, then in this case the defendant will need to pay an additional fee and indicate the alleged arbitrators. In this case, the WIPO Center will nominate one candidate of the Applicant's choice, a second of the Respondent's choice, and a third of its own discretion.The next feature of the consideration of the case in the administrative procedure is the absentee procedure for considering the complaint. This procedure is undoubtedly convenient and contributes to a fairly quick consideration of the dispute. According to paragraph 15 of the Rules, the arbitrator considers the case solely on the basis of documents and explanations submitted by the parties. Additional documents can only be provided upon request of the WIPO Center.Another feature of the consideration of a complaint by the WIPO Center is the relatively short time limit set for this procedure. In total, from the moment the complaint is filed until the decision is made by the administrative commission, a period of two to three months is set, depending on the moment the respondent provides a response (the respondent is given a period not exceeding twenty calendar days to provide a response). For comparison, the procedural term for considering a domain dispute by a Russian court in compliance with the pre-trial procedure (with subsequent presentation of material claims), including two instances, will be at best six months.In accordance with paragraph 4 of the Policy, at its discretion, the applicant has the right to demand either to transfer the disputed domain name to the applicant, or to oblige the registrar to cancel the registration of the disputed domain name. When considering a similar case in a Russian court, the plaintiff, also in accordance with Article 1515 of the Civil Code of the Russian Federation, has the right to demand, at his choice, from the violator, instead of compensation for losses, payment of compensation in the amount of ten thousand to five million rubles, determined at the discretion of the court based on the nature of the violation. When filing a complaint with the WIPO Center, the complainant does not have the opportunity to seek compensation from the defendant. In addition, when considering a case in a Russian court, the party in whose favor the judicial act was adopted has the right to recover legal costs from the other party.When filing a complaint with the WIPO Center, the applicant must prove three facts in total: 1) the disputed domain name is identical or confusingly similar to the applicant's trademark/trademarks; 2) the disputed domain name administrator has no rights and legitimate interests in relation to the domain name; 3) the disputed domain name has been registered and is being used in bad faith ((ix), (b), 3 of the Policy). The defendant, in response to the filed complaint, may indicate the following facts: 1) the defendant used the disputed domain name in good faith before filing the corresponding complaint; 2) the defendant uses the disputed domain name for non-commercial purposes and does not pursue the goal of deriving profit; 3) the defendant is widely known among consumers.It should also be noted that the procedure discussed above does not prevent the possibility of considering a dispute about the same domain name in a Russian court both before and after the dispute is considered in an administrative procedure.Thus, the administrative way to protect the right to a trademark in case of illegal use in a domain name in the WIPO Center definitely has both its pluses and minuses. In this regard, the choice of a way to protect the violated right of a person remains at his discretion.Source: 1.Order of Roskomnadzor No. 216 dated July 29, 2019 “On determining the list of groups of domain names that make up the Russian national domain zone”.
How to protect a recipe?
The French philosopher, culinary specialist, lawyer of the 18-19th centuries, Jean Antelme Brillat-Savarin, wrote in one of his books: “Tell me what you eat; I'll tell you who you are." Indeed, every day we are faced with various variations of food preparation - from simple-cooked products to the most complex gourmet dishes. The recipe of this or that dish can be associated with a certain person, become the hallmark of a chef, a restaurant, and even an entire country. But how can a recipe be legally protected?Art. 1225 of the Civil Code of the Russian Federation provides a list of protected results of intellectual activity and means of individualization. In accordance with paragraph 33 of the Decree 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" (hereinafter - Decree No. 10), this list is exhaustive. A culinary recipe is not explicitly listed as a protected intellectual property object, however, under current law, a recipe can be protected in several ways, which will be discussed below.1) Copyright. In paragraph 5 of Art. 1259 of the Civil Code of the Russian Federation clearly states that "copyrights do not apply to ideas, concepts, principles, methods, processes, systems, methods , solutions to technical, organizational or other problems, discoveries, facts, programming languages, geological information about the subsoil." Accordingly, a culinary recipe cannot be copyrighted as an idea, concept, method, process, system or way of preparing a dish that a person has thought up in his head and not put into an objective form. At the same time, paragraph 1 of the above article contains an open list of objects of copyright, one of which is works of literature.The current legislation provides for two criteria by which a work is granted legal protection: creative nature (according to Article 1257 of the Civil Code of the Russian Federation) and expression in an objective form (according to paragraph 3 of Article 1259 of the Civil Code of the Russian Federation). In this regard, if these criteria are theoretically met, a culinary recipe can be granted legal protection as a work of literature, but in practice it is extremely difficult to give the text of a recipe a creative character.At the same time, by virtue of paragraph 2 of Art. 1260 of the Civil Code of the Russian Federation: “the compiler of a collection and the author of another composite work (an anthology, encyclopedia, database, website, atlas or other similar work) owns the copyright for the selection or arrangement of materials (compilation) they have carried out.” This allows us to conclude that in the collection of recipes, from the point of view of copyright, the selection or arrangement of the recipes themselves, and not the text of the recipe as such, can be protected.2) Patent law. In accordance with paragraph 1 of Art. 1345 of the Civil Code of the Russian Federation, patent rights are intellectual rights to inventions, utility models and industrial designs.2.1) Invention. According to Art. 1350 of the Civil Code of the Russian Federation: “as an invention, a technical solution is protected in any field related to a product (in particular, a device, substance, microorganism strain, plant or animal cell culture) or a method (the process of performing actions on a material object using material means), including the use of the product or method for a particular purpose.” . In this regard, the recipe may be granted legal protection as an invention under the patent of the Russian Federation as a method of preparing a particular dish. However, it should be noted that the above article also specifies the conditions for granting legal protection to the invention: novelty, inventive step and industrial applicability. Only under these conditions can a culinary recipe be protected as an invention.The fourth part of the civil code reveals the conditions for the patentability of an invention. Thus, an invention is new if it is not known from the prior art. This means that the recipe intended for registration as an invention must be different from all previously created inventions included in the known state of the art, i.e. differ from the information that became publicly available in the world before the priority date of the invention. With respect to the second condition of patentability, an invention has an inventive step if it does not clearly follow from the state of the art for a person skilled in the art. This criterion of so-called "non-obviousness" means that a patent for an invention can only be granted in relation to a recipe that is truly an innovative result of the creative work of the inventor of the recipe. Finally, the third condition for patentability is industrial applicability - that is, the possibility of use in industry, agriculture, health care, other sectors of the economy or in the social sphere. In other words, a recipe should not just be an idea or idea: there should be a real possibility of preparing a dish according to such a recipe.Examples of culinary recipes patented as inventions are: RF patent No. 2 765 208 "Method of obtaining glazed french fries", No. 2 759 671 "Method of preparing the culinary product" Mini-rolls of pancakes "", No. 2 732 321 "Waffle product or air extruded grain product”, № 2 764 299 “Method of making sweet potato pie”.It is important to understand that in this case, right protection is granted to the method of preparation of a particular dish, and not to its final result.2.2) Industrial model. In accordance with paragraph 1 of Art. 1352 of the Civil Code of the Russian Federation “as an industrial design, the solution of the appearance of a product of industrial or handicraft production is protected.An industrial design is granted legal protection if it is new and original by its essential features.The essential features of an industrial design include features that determine the aesthetic features of the appearance of the product, in particular the shape, configuration, ornament, combination of colors, lines, contours of the product, texture or texture of the material of the product.Features that are solely due to the technical function of the product are not protected features of an industrial design.A dish will be new if the totality of its essential features of appearance (i.e., features that determine the aesthetic features of the appearance) is not known from information that became publicly available in the world before the priority date of the industrial design. A dish will be original if its essential features are due to the creative nature of the features of the dish, in particular if, from the information that has become publicly available in the world before the industrial design priority date, there is no known solution to the appearance of a dish of similar purpose that produces the same general impression on an informed consumer as it does an industrial design reflected in the images of the appearance of the dish.Thus, in this case, legal protection will not be granted to the method of preparation, but to the appearance of the dish, if it is new and original.This design protection method is widely used to protect the appearance of confectionery products. For example, RF patent No. 80349 for a group of industrial designs “Portion cake (2 options) (product as a whole) and a portion of cake (2 options) (independent part of the product), RF patent No. 55134 for an industrial design “Pancho cake”, RF patent No. 62144 for the industrial design "Sancho Cake", RF patent No. 59195 for the industrial design "Almond Cake", RF patent No. 131703 for the industrial design "Dimien Cake".As for judicial practice, within the framework of arbitration case No. A65-5946 / 2012, an application was considered to prohibit the illegal use of patent No. industrial design in the amount of 300,000 rubles. By the decision of the court of first instance, the claims were partially satisfied: the defendant was obliged to change the design of the appearance of the cake "Parizhanka", remove from the design of the appearance of the cake elements protected by the patent of the Russian Federation No. 75330 for an industrial design, and also pay compensation in the amount of 100,000 rubles. By the decision of the Eleventh Arbitration Court of Appeal of 09.10.2012 in case No. А65-5946/2012, the decision of the court of first instance remained unchanged.3) Production secret (know-how). In accordance with paragraph 1 of Art. 1465 of the Civil Code of the Russian Federation “a secret of production (know-how) is information of any nature (industrial, technical, economic, organizational and others) about the results of intellectual activity in the scientific and technical field and about methods of carrying out professional activities that have actual or potential commercial value due to their being unknown to third parties , if third parties do not have free access to such information on a legal basis and the owner of such information takes reasonable measures to maintain their confidentiality, including by introducing a trade secret regime. By virtue of clause 144 of Decree No. 10 , “preserving the confidentiality of information precisely by introducing a trade secret regime is not mandatory.”. In addition, as an object of intellectual property, a production secret (know-how) is not subject to mandatory state registration.Information about the secret of production (know-how) is not published in any open registry and third parties do not have access to it. Thus, this way of legal protection of a culinary recipe is suitable if the owner of the recipe has the goal of keeping it secret.The most famous examples of recipes in the world protected as a secret of production (know-how) are: the recipe for the soft drink Coca - Cola, the recipe for butter beer from the magical world of Harry Potter, the recipe for the world-famous donuts Krispy Kreme, the recipe for red vermouth MARTINI ROSSO, KFC chicken recipe, Heinz tomato ketchup recipe.Thus, depending on the purpose pursued by the author of the prescription, there are several ways of legal protection of such a prescription. However, when determining how to protect a culinary recipe, it is necessary to determine what exactly is important in the protection of a culinary recipe: the selection or arrangement of recipes in a collection, the method of preparation, the appearance of the dish, or the confidentiality of the recipe.
Withdrawal of an expert in disputes related to intellectual property
In accordance with Art. 82 of the Arbitration Code of the Russian Federation, parties participating in the case are entitled to file an appropriate petition with the court for the appointment of an examination of the case. At such a request or with the consent of the persons participating in the case, in order to clarify issues requiring special knowledge, the court appoints an expert examination on the case under consideration. The court also appoints an expert examination on its own initiative, regardless of the consent of the persons participating in the case, in cases where the appointment of an expert examination is prescribed by law or provided for by an agreement, or is necessary to verify a statement about the falsification of evidence, or if an additional or repeated expert examination is required. An arbitration court shall issue an appropriate ruling on the appointment of an expert examination or on the rejection of a petition for the appointment of an expert examination.The regulatory framework governing the activities of conducting an examination is made up of the relevant norms of the Arbitration Code of the Russian Federation, Federal Law No. 73-FZ of May 31, 2001 "On State Forensic Expertise Activities in the Russian Federation" (hereinafter referred to as the Law on Expertise), as well as the Decree of the Plenum The Supreme Arbitration Court of the Russian Federation dated 04.04.2014 N 23 "On Some Issues of the Practice of Application by Arbitration Courts of the Legislation on Expertise" (hereinafter - Resolution of the Plenum No. 23). On the basis of Article 41(1) of the Law on Expertise, a forensic examination may be carried out outside state forensic institutions by persons with special knowledge in the field of science, technology, art, or craft, but who are not state forensic experts. Non-state forensic activities and non-state experts are also subject to the relevant provisions of the Law on Expertise.In accordance with paragraph 3 of Art. 82 of the Arbitration Procedure Code of the Russian Federation, the persons participating in the case have the right to apply for the involvement of the persons indicated by them as experts or for the conduct of an examination in a specific expert institution. Paragraph 2 of Decree of the Plenum No. 23 states that when ordering an examination of a person who is not a state forensic expert, the court also finds out information about his education, specialty, work experience, and position held and indicates them in the ruling on the appointment of an examination (Art. 82).The aforementioned regulatory legal acts establish requirements for the activities of an expert, non-compliance with which may be the basis for the removal of an expert. In particular, the grounds for challenge are established in Art. 21 and 23 of the Arbitration Code of the Russian Federation.In accordance with Art. 23 of the Arbitration Code in the cases provided for by Art. 21 of the Arbitration Code, the grounds for disqualification of an expert are:Conducting an audit or inspection by an expert, the materials of which have become a reason for applying to an arbitration court or are used in the consideration of a case;If the expert is a relative of the person participating in the case or his representative;If the expert is personally, directly, or indirectly interested in the outcome of the case, or there are other circumstances that may cast doubt on his impartiality;If the expert is or was previously in official or other dependence on the person participating in the case or his representative;If the expert made public statements or gave an assessment on the merits of the case under consideration.In addition, Art. 16 of the Law on Expertise states that an expert is not entitled to:enter into personal contact with the participants in the proceedings, if this casts doubt on his disinterest in the outcome of the case;independently collect materials for the production of a forensic examination;inform anyone about the results of the forensic examination, with the exception of the body or person who appointed it;destroy objects of research or significantly change their properties without the permission of the body or person who ordered the forensic examination.Based on paragraph 3 of Art. 82 of the Arbitration Procedure Code of the Russian Federation, one of the rights of the persons participating in the case is the right to challenge the expert. At the same time, according to the legal position of the Constitutional Court of the Russian Federation dated July 17, 2012 No. 1409-O, the obligation of the expert to declare self-withdrawal is established, as well as the obligation to withdraw the expert from participation in the forensic examination and the need to immediately terminate its production, if it is entrusted to him, in the presence of the stipulated procedural statutory grounds, including when interested in the outcome of the case. This definition also states that the provisions of Article 24 of the Arbitration Procedure Code of the Russian Federation do not imply arbitrary application: if there are grounds established by Articles 21 and 23 of this Code, consideration of the issue of challenging an expert is not a right, but an obligation of the arbitration court considering a specific case.In accordance with paragraph 2 of Article 24 of the Arbitration Procedure Code of the Russian Federation, self-withdrawal or challenge must be motivated and declared before the start of the consideration of the case on the merits. During the consideration of the case, an application for self-withdrawal or challenge is allowed only if the grounds for self-withdrawal or challenge became known to the person declaring self-withdrawal or challenge after the commencement of the consideration of the case on the merits.Judicial practice on the challenges of an expert in disputes related to intellectual property is rather scarce. First of all, this may be due to the fact that the facts that may serve as grounds for possible subsequent removal of an expert are usually considered by the court before issuing a ruling on the appointment of an expert examination in the case on the basis of information about the expert provided by the persons participating in the case. Let us consider the cases of challenges of experts in cases related to intellectual property.By the ruling of the Court for Intellectual Property Rights dated October 26, 2020, in case No. SIP-978/2019, the applications of third parties who do not file independent claims regarding the subject of the dispute (hereinafter referred to as third parties) on the removal of expert Vladimir Khoroshkeev, as well as on the removal of the expert candidacy Lisovenko Viktor Borisovich in view of the following. The third person, when motivating doubts about the lack of interest and impartiality of the expert, refers to the fact that the expert Khoroshkeev V.A. from 1985 to 1991, worked in the previous federal-state institution of the Federal Institute of Industrial Property (FIPS) as a state patent examiner. This fact, according to the third party, testified to the official or other dependence of the person participating in the case. Furthermore, the third party pointed out that the expert opinion of Khoroshkeev V.A. contained additional conclusions on issues not raised by the court, and the expert's answers to these questions could be a legal assessment of the disputed decision of Rospatent, which is the exclusive prerogative of the court. These circumstances, according to the third party, could also indicate the existence of doubts about the impartiality of the expert. Assessing the above arguments, the court pointed to the absence in the case file of information about the work of Khoroshkeev V.A. in an organization that is the legal successor of FIPS. At the same time, the court agreed with the argument of a third party on the additional conclusions contained in the conclusion and on the basis that the expert was personally, directly, or indirectly interested in the outcome of the case, granted the application for the challenge of the expert Khoroshkeev V.A. This ground is provided for by subparagraph 5 of part 1 of article 21 of the Arbitration Procedure Code of the Russian Federation.Also in the present case, the applicant applied for the removal of expert V.B. Lisovenko. In particular, the applicant pointed out that this expert worked in a company that provided patent and representation services to another third party in the case under consideration. In this case, the court also saw grounds for challenging the expert under subparagraph 5 of part 1 of article 21 of the Arbitration Procedure Code of the Russian Federation - personal, direct, or indirect interest in the outcome of the case, or the presence of other circumstances that may cast doubt on his impartiality.By the decision of the Court for Intellectual Property Rights in case No. SIP-664/2018 of 03/07/2019, the application of a foreign person to challenge the expert Pasynok M.S. was satisfied. This statement was motivated by the fact that from 03/04/2005 to 05/07/2008 the named expert worked at FIPS as a patent expert, and, therefore, was in official or other dependence on the person participating in the case. According to the evidence available in the case file, the court concluded that Pasynok M.S. previously was in official or other dependence on the person participating in the case, and on the basis of subparagraph 6 of part 1 of article 21 of the Arbitration Procedure Code of the Russian Federation satisfied the application of the foreign person to challenge the expert.There is much more judicial practice on the rejection by the courts of petitions to challenge an expert. Thus, in case No. SIP-909/2019, by a ruling dated 12/09/2020, the court of the first instance refused to satisfy the application for the challenge of expert Korchagin I.I. The court of cassation also did not see a contradiction between the refusal to challenge this expert. There were also refusals to satisfy the demands for the removal of experts in cases No. SIP-708/2018, SIP-567/2020, A40-256459/2019, SIP-783/2019, SIP-676/2019, A70-9233/2016, SIP -685/2017, SIP-158/2014, SIP-134/2013.An analysis of judicial practice has shown that in disputes related to intellectual property, the courts satisfied the requirements to challenge experts on the basis of subparagraphs 5 and 6 of part 1 of Article 21 of the Arbitration Procedure Code of the Russian Federation, by virtue of which an expert cannot participate in the consideration of the case and is subject to challenge if he personally, is directly or indirectly interested in the outcome of the case, or there are other circumstances that may raise doubts about his impartiality, as well as if he is or was previously in official or other dependence on the person participating in the case, or his representative.Thus, when entrusting an examination to a person who is not a state forensic expert, the persons participating in the case should be as careful as possible about the candidates for experts proposed for consideration by the court.