The publication of a court decision as a means of protecting infringed exclusive rights

Civil legislation identifies a number of ways to protect violated rights. Due to the specific nature of relations in the sphere of intellectual property, legislation establishes special ways to protect violated rights.

In accordance with the provisions of Article 1252 of the Civil Code of the Russian Federation, the protection of exclusive rights to the results of intellectual activity and to means of individualization is carried out in the following ways:

• Recognition of the right;
• Prevention of actions that violate or threaten to violate the right;
• Compensation for damages;
• Seizure of material carriers;
• Publication of the court’s decision regarding the infringement with an indication of the rightful owner.

This article proposes to consider such a method of protecting the violated exclusive right as a demand for publication of the court decision. It is worth noting that this method of protecting the right cannot be called "unpopular". An analysis of judicial practice in cases of violation of intellectual property rights shows that this requirement is often stated by plaintiffs in conjunction with a demand for compensation or other material claims. However, the satisfaction of the stated requirement does not always occur, in connection with which this article proposes to consider the reasons for refusing to satisfy such a requirement, as well as this institution as a whole.

Publication of a court decision as a way of protection

It is worth noting that the method of protecting a violated right under consideration is “auxiliary” and is most often presented in addition to material methods of protecting a violated right.

The institution existed in the previously effective Law of the Russian Federation of 23.09.1992 No. 3520-I “On Trademarks, Service Marks and Appellations of Origin of Goods”, in the Patent Law of 23.09.1992 No. 3517-I, and was aimed at restoring the damaged business reputation of the victim.

In general, it can be said that even at present the method is more aimed at restoring damaged business reputation and is often used by plaintiffs to publish decisions on the defendants’ websites, where the honor and dignity of the plaintiff was somehow defamed, for example, when selling counterfeit goods.

What should the plaintiff consider?

Let us consider the main questions that arise before the plaintiff planning to choose this method of protection:

• Where should the decision be published?
• What font should be used, and where should the decision be placed?
• For how long should the decision be displayed?
• What are the consequences if the defendant does not comply with the court’s publication order?

Since civil legislation does not contain specific requirements for the format of publication of the decision, let us turn to the provisions of paragraph 58 of the Resolution of the Plenum of the Supreme Court of the Russian Federation dated 23.04.2019 No. 10:

When filing a claim for publication of a court decision on a violation committed, indicating the actual copyright holder (subparagraph 5 of paragraph 1 of Article 1252 of the Civil Code of the Russian Federation), the plaintiff must indicate where the relevant publication is required and justify the reasons for his choice. The defendant has the right to present his objections regarding the place of publication of the decision. When assessing the arguments of the plaintiff and the objections of the defendant regarding the proposed place of publication, the court has the right to determine the place of publication of the decision based on the fact that the choice of such a place should be aimed at restoring the violated right (for example, in the same printed publication where inaccurate information about the copyright holder was published; in the official bulletin of the federal executive body for intellectual property; in a source, the place of distribution of which is determined by the place of production and distribution of counterfeit goods or the place of implementation and nature of the plaintiff's activities.

As can be seen from the above resolution, the plaintiff must indicate the location of the decision; there are no requirements regarding the font size or the specific location of the text.

Meanwhile, Resolution No. 10 directly states that the choice of location must be aimed at restoring the violated right. As an example, let us consider several recent cases in which the court satisfied the plaintiff's demand for publication of the court decision.

Thus, in case No. A54-10980/2022, the Intellectual Property Court, when considering the case as a court of cassation, overturned the acts of lower courts in terms of refusing to publish the decision (Resolution of the Intellectual Property Court dated 01.04.2024 in case No. A54-10980/2022). The plaintiff had filed a claim to oblige the defendants to publish information about the violation of the exclusive right to a trademark on the websites they use.

By the decision of the court of first instance, left unchanged by the ruling of the court of appeal, the plaintiff was denied satisfaction of the stated claim in connection with the following circumstances: the plaintiff did not substantiate the reasons for choosing this method of protecting his rights, and did not motivate the choice of the relevant sources.

The court of cassation did not agree with the arguments of the court of first instance, noting that the justification for the method of protection under consideration indicated by the plaintiff corresponds to the subject of the dispute and the circumstances of the case, is aimed at preventing the further threat of confusion of the designation used by the defendants with the plaintiff's trademark, and therefore meets the principle of restoration of violated rights.

The Intellectual Property Court also noted that when establishing the fact of the defendants’ violation of the plaintiff’s exclusive right to the disputed trademark, the court had no legal grounds for refusing to satisfy the request to publish the court’s decision on the violation.

In addition, the court of cassation, when referring the case for a new trial in this part, indicated to the court of first instance the need to establish the source for the publication of the court decision, the period of publication, and other circumstances related to the fulfillment of this obligation (in particular, the font size, the website page), which are necessary when considering the requirement to publish the court decision on the violations of the plaintiff's exclusive right to the trademark committed by the defendants.

In another case, No. A56-65573/2023, the Intellectual Property Court, acting as a court of cassation, upheld the decisions of the lower courts, which satisfied the plaintiff’s request for publication of the court’s decision.

The case is noteworthy for the way the plaintiff approached the formulation of its demands: “...to oblige, within five days from the moment the court decision comes into legal force, to publish at its own expense the operative part of the court decision on the violation committed at the top of the main page of the website located at www.cbb.ru, as well as in the form of a pinned post on the “wall” of the “Weider College” community on the social network “VKontakte” (https://vk.com/weidercollege) with the following accompanying text: “The decision of the arbitration court has satisfied the demands of the Russian Bodybuilding Federation against the Ben Weider College of Fitness and Bodybuilding for the protection of the exclusive right to the Federation’s trademark No. 917608”, - in text format and in the font usually used in other publications on the relevant Internet resource, without the right to remove such publication for one year.” (Resolution of the Intellectual Property Court dated 06.05.2024 in case No. A56-65573/2023).

In essence, the plaintiff took into account all the issues, namely: the period during which the decision must be published; the period for which the decision is published; the place of publication; the format of publication, as well as at whose expense the publication is made and what text must be published.

It is also necessary to remember that the requirement alone is not enough, the plaintiff should justify the reasons for choosing this method of protecting the right and take into account that when deciding to satisfy the stated requirement, the court also considers the defendant's objections. This position is reflected in the ruling of the Intellectual Property Court in case No. A40-194068/2016 (Resolution of the Intellectual Property Court of 18.09.2017 in case No. A40-194068/2016). The Intellectual Property Court, considering the case as a cassation instance, upheld the decision of the court of first instance and the ruling of the court of appeal appealed by the plaintiff, which denied the plaintiff's stated claims, including the requirement to publish the judicial act in a number of information resources, due to the fact that the plaintiff did not substantiate the reasons for choosing this method of protecting the right.

It is also worth noting separately the possibility for a patent holder to demand publication in the official executive authority on intellectual property (Rospatent) of a court decision on the illegal use of an invention, utility model, industrial design or other violation of his rights. To do this, it is necessary to submit an application to the Office in the form with the attached documents and pay the state fee.

What are the drawbacks of this method?

An obvious disadvantage of this method is the potential for the defendant to fail to comply with the court decision.

In such a case, it is possible to turn to the institution of "astrent" - a fine for failure to comply with a judicial act in kind, which can be imposed in a fixed amount or as a percentage for each day, week or month of inaction of the debtor. That is, if the plaintiff has filed a demand for the publication of the court decision by the defendant within a certain period (for example, within five days from the date of entry into force of the court decision, as in the above case No. A56-65573/2023) and this demand is satisfied, then after the expiration of the specified period, the plaintiff has the opportunity to use such an instrument as astrent.

In conclusion, we would like to note once again that such a method of protecting the violated exclusive right as the publication of a court decision is effective and can be used in addition to the plaintiff's material claims or as an independent tool for protecting the right. However, it is worth considering that when making this claim, it is necessary to justify the reasons for choosing this method, as well as clarify the details of the publication.