The IP Court confirmed the abuse of the right when demanding multimillion-dollar compensation and clarified some aspects of proving its size

The Intellectual Property Court considered a multimillion-dollar compensation case, in which the courts did not agree on the degree of the plaintiff's good faith, as well as the rationale for the amount of the amount recovered.

The foreign company Olympus Corporation filed a lawsuit against the bank demanding to stop the violation of the exclusive right to the trademark "OLIMPUS" and collect compensation in the amount of 581,599,053 rubles.

The lawsuit was motivated by the fact that the initially disputed product, marked with the corresponding trademark, was sold by the plaintiff under a distribution agreement, which stipulated that further equipment could be sold only in Mongolia, without the right to import it to Russia, however, the plaintiff found an offer to sell this product to a Russian the respondent company.

The court of first instance, satisfying the claim, reduced the amount of compensation to 55,000,000 rubles, but the appellate instance annulled the act, based on two main provisions.

Firstly, the court of appeal pointed out that it is impossible to claim compensation in the absence of evidence of damages, since the existence of losses is a prerequisite for the emergence of the right to compensation (in fact, these are losses, the amount of which does not need to be proven). Such a conclusion, according to the court, follows, for example, from the conceptual apparatus of the Decree of the Constitutional Court of the Russian Federation of July 24, 2020 N 40-P, in which the category of compensation is related to the category of losses (“... [the Norm] does not allow the court ... to reduce ... the amount of compensation if this amount is many times greater than the amount of damages caused to the right holder ...”).

Secondly, the Court of Appeal also found that the plaintiff's behavior is unfair and is not aimed at protecting his rights as a copyright holder, but at enrichment at the expense of the defendant.

The Court of Cassation upheld the second conclusion, disagreeing with the first.

With regard to the relationship between proving the existence of losses and payment of compensation, the SIP indicated that, contrary to the position of the court of appeal, the circumstances underlying Resolution No. the right holder has the right to demand payment of compensation for violation of the exclusive right instead of compensation for damages and is released from proving the amount of damages caused to him.

With regard to the established abuse of the right, the court noted the following.

Constitutional Court of the Russian Federation, in its resolution of February 13, 2018 N 8-P, determined the cases in which the courts may, on the basis of Art. 10 of the Civil Code of the Russian Federation to refuse to apply the consequences of importing into the territory of the Russian Federation without the consent of the trademark owner of a specific batch of goods on which the trademark is placed by the copyright holder or with his consent and which is legally put into circulation outside the Russian Federation. At the same time, such cases are of an extraordinary nature (threat to the life and health of citizens, other publicly significant interests; adherence of the trademark owner to the regime of sanctions against the Russian Federation).

The following set of circumstances testified to the abuse of the plaintiff's right:

• presentation of an unreasonably high amount of compensation, taking into account the fact that the product was original, originally sold by the copyright holder himself (which excluded the danger of introducing such a product into circulation);
• the claim is made against the bank that acquired the right to the disputed products as a pledgee;
• the plaintiff refused the bank's proposal to issue him a compensatory consent in relation to the disputed goods without substantiating reasonable motives;
• a ban on the sale of the disputed goods will entail large losses for the bank and is tantamount to the destruction of the goods.