Consideration by arbitration courts of claims for the IP protection in a simplified manner

Features of the consideration of cases in the simplified procedure

One of the components of the Arbitration Procedure Code of the Russian Federation is Chapter 29, which is called “Consideration of cases through simplified proceedings”.

Based on the provisions of Article 228 of the Arbitration Procedure Code of the Russian Federation, the features of consideration of cases under simplified proceedings are:

• The consideration of the case takes place without calling the parties (Part 5 of Article 228 of the Arbitration Procedure Code of the Russian Federation);
• The court posts the case materials in electronic form in a limited access mode (Part 1 of Article 228 of the Arbitration Procedure Code of the Russian Federation). In order for the parties to access such materials, the court sends them a code with which they can gain access through the Card Index of Arbitration Cases system in the card of a specific case (paragraph 2, part 4, article 228 of the Arbitration Procedure Code of the Russian Federation);
• The court sets a time limit for sending a response to the statement of claim to the court (at least 15 days from the date of the decision to accept the claim for proceedings) (Part 2 of Article 228 of the Arbitration Procedure Code of the Russian Federation);
• The court sets deadlines for the submission of additional documents (at least 30 days from the date of the decision to accept the claim for proceedings) (Part 3 of Article 228 of the Arbitration Procedure Code of the Russian Federation).

Thus, the main feature of the consideration of such cases is their consideration without calling the parties, that is, without holding court hearings.

However, the current edition of the Arbitration Procedure Code of the Russian Federation provides for exceptional cases when such a meeting can be held without proceeding to the consideration of the case according to the general rules of claim proceedings.

In particular, paragraph 4 of paragraph 5 of Article 228 of the Arbitration Procedure Code of the Russian Federation states that, taking into account the nature and complexity of the case, the arbitration court has the right, on its own initiative or at the request of the persons participating in the case, to hold a court hearing with the summons of the persons participating in the case, without proceeding to consideration of the case according to the general rules of claim proceedings or according to the rules of administrative proceedings.

As for the timing of consideration of these cases, as follows from Part 2 of Article 226 of the Arbitration Procedure Code of the Russian Federation, cases in the simplified procedure are considered by a single judge within a period not exceeding two months from the date of receipt of the statement of claim, application to the arbitration court, and in the case of a court hearing - within a period not exceeding three months from the date of receipt of the statement of claim or application to the arbitration court.

The period for consideration of a case in a simplified procedure cannot be extended, except for the case provided for in Part 3 of Article 253 of the said Code.

As stated in Part 3 of Article 253 of the Arbitration Procedure Code of the Russian Federation, in cases where foreign persons participating in a case considered by an arbitration court in the Russian Federation are located or reside outside the Russian Federation, such persons are notified of the trial by a ruling of the arbitration court by sending an order to the institution justice or other competent authority of a foreign state. In these cases, the period for consideration of the case is extended by the arbitration court for the period established by the agreement on legal assistance for sending instructions to a justice institution or other competent body of a foreign state, and in the absence of such a period in the agreement or in the absence of the specified agreement, no more than for a year.

Thus, the timing of consideration of these cases is another feature of simplified proceedings - such cases are considered much faster than cases considered according to the general rules of claim proceedings.

What cases can be considered under the rules of simplified proceedings?

However, not every case can be considered according to the rules of simplified proceedings - such cases are directly listed in Article 227 of the Arbitration Procedure Code of the Russian Federation, namely the cases:

• for claims for recovery of funds, if the cost of the claim does not exceed for legal entities one million two hundred thousand rubles, for individual entrepreneurs - six hundred thousand rubles;
• on challenging non-normative legal acts, decisions of bodies exercising public powers, officials, if the relevant non-normative legal act or decision contains a requirement for the payment of funds or provides for the recovery of funds or foreclosure on other property of the applicant, provided that these acts, decisions are contested by the applicant in terms of the requirement to pay money or collect funds or foreclose on other property of the applicant and the amount disputed by the applicant does not exceed one hundred thousand rubles;
• on bringing to administrative liability, if for committing an administrative offense the law establishes administrative punishment in the form of a warning or an administrative fine, the maximum amount of which does not exceed one hundred thousand rubles;
• on challenging the decisions of administrative bodies to bring to administrative responsibility, if an administrative penalty in the form of a warning or an administrative fine is imposed for committing an administrative offense, the amount of which does not exceed one hundred thousand rubles;
• on the collection of mandatory payments and sanctions, if the total amount of money to be collected, indicated in the application, does not exceed two hundred thousand rubles, with the exception of cases considered in the order of writ proceedings.

In addition, the following cases are subject to summary proceedings, regardless of the value of the claim:

• for claims based on documents submitted by the plaintiff establishing the defendant’s monetary obligations, which are recognized by the defendant but not fulfilled, and (or) on documents confirming the debt under the contract, with the exception of cases considered in the order of writ proceedings;
• on claims based on a notary’s protest of a bill of exchange for non-payment, non-acceptance and undated acceptance, with the exception of cases considered in the order of writ proceedings;
• on demands for the collection of contributions payable by members of non-profit organizations specified in Part 1 of Article 225.1 of the Arbitration Procedure Code of the Russian Federation.

Part 3 of Article 227 of the Arbitration Procedure Code of the Russian Federation states that at the request of the plaintiff with the consent of the defendant or at the initiative of the court with the consent of the parties, other cases may also be considered in summary proceedings if there are no circumstances specified in part 5 of this article, including the following:

• during the consideration of the case in the simplified procedure, the petition of a third party, declaring independent claims regarding the subject of the dispute, to intervene in the case, was accepted, a counterclaim was accepted, which cannot be considered according to the rules established by this chapter, or if the court, including at the request of one of the parties, came to the conclusion that:
• the procedure for simplified proceedings may lead to the disclosure of state secrets;
• it is necessary to find out additional circumstances or examine additional evidence, as well as conduct an inspection and study of the evidence at its location, order an examination or hear testimony;
• the stated claim is related to other claims, including to other persons, or a judicial act adopted in this case may violate the rights and legitimate interests of other persons.

Cases related to the jurisdiction of the IP Court

As indicated in Part 4 of Article 227 of the Arbitration Procedure Code of the Russian Federation, cases of challenging decisions and actions (inaction) of an official of the bailiff service, cases relating to the jurisdiction of the Intellectual Rights Court as a court of first instance, and insolvency cases are not subject to consideration in summary proceedings (bankruptcy), cases on corporate disputes, with the exception of cases specified in paragraph 3 of part 2 of the said article, cases on the protection of the rights and legitimate interests of a group of persons, cases related to the foreclosure of funds from the budgets of the budget system of the Russian Federation.

It is also worth considering that if two claims are made that arise from civil legal relations, one of which is of a property nature and relates to the requirements specified in parts 1 or 2 of Article 227 of the Arbitration Procedure Code of the Russian Federation, and the second claim is of a non-property nature and the court will not separate this claim into separate proceedings on the basis of Part 3 of Article 130 of the Arbitration Procedure Code of the Russian Federation; both claims are considered in summary proceedings.

Taking into account the above rules of law, the most important for cases on the protection of intellectual property are the provisions that cases within the jurisdiction of the Intellectual Property Rights Court as a court of first instance are not considered under summary procedure.

However, the Code does not restrict the Intellectual Rights Court from considering such cases in cassation proceedings - in particular, we are talking about cases previously considered by courts of first and appellate instances in summary proceedings.

Based on the foregoing, the most common cases considered by arbitration courts in summary proceedings and related to intellectual property are cases related to the collection of compensation for violation of the exclusive right to such objects (clause 1 of part 1 of Article 227 of the Arbitration Procedure Code of the Russian Federation).

At the same time, the legislator is gradually increasing the cost of the claim at which such cases can be considered through simplified proceedings.

Thus, until December 25, 2023, the wording of this article provided for a limitation on the price of a claim to eight hundred thousand rubles for legal entities, and up to four hundred thousand rubles for individual entrepreneurs.

At the same time, the procedure for simplified proceedings is often used by copyright holders to increase the chances of collecting compensation in a larger amount - in judicial practice it is customary to underestimate excessive compensation, which is why copyright holders split one claims into several cases (for consignments of goods, musical works, etc.), creating the appearance of collecting small compensations (instead of one large one) - often this tactic turns out to be effective.

As follows from the provisions of Article 229 of the Arbitration Procedure Code of the Russian Federation, the court makes a decision alone and only its operative part.

As a general rule, the motivation part is not compiled. In order for the court to draw up a reasoning for its decision, it is necessary to either submit a petition to the court for its preparation (within 5 days from the date of posting the operative part of the decision on the Internet), or send an appeal to the court against the said decision. In this case, the court prepares the reasoning part of the decision within 5 days. In this case, the decision is subject to immediate execution, but comes into force after fifteen days from the date of its adoption (unless an appeal is filed).

An additional feature of such cases is the impossibility of appealing the decisions of the Intellectual Rights Court to the second cassation (the Supreme Court of the Russian Federation) in the event that the Intellectual Rights Court has decided to uphold the decision of the appellate court (Part 3 of Article 291.1 of the Arbitration Procedure Code of the Russian Federation). For example, case No. A40-232321/2020.