Why one should not state in the statement of claim a requirement for the recognition of the acts for the use of the subject matter of intellectual property as illegal

Very often, in our practice related to the participation in the judicial disputes in the field of intellectual property, we are faced with the situation, when plaintiffs, after getting familiar with the provisions of Article 1252 of the Civil Code of the Russian Federation (hereinafter referred to as the C.C.R.F., the Code), in fact write down literally this norm into a petitionary part of the statement of claim. The most common requirements of the statements of claims are as follows:

• to withdraw from the circulation and to destroy the counterfeit products at the expense of the violator, on which the trademark is placed illegally (though, it is not quite clear, where these products are being stored, in what quantity, and how the bailiff and executor of justice should identify them? – The author's comment);
• to prohibit to use the trademark, the utility model, the topographies of the integrated circuits from now on and forever;
• to recognize the defendant’s act regarding the introduction into the civil circulation of the products marked with the disputable designation as a violation of the plaintiff’s exclusive right.

I already touched upon the analysis of the first two requirements in my article, which is called “The fight against counterfeit by bringing the violator to civil responsibility”

So, regarding the requirement for the prohibition, the courts point out that the abstract requirements for a general prohibition to a particular person to use at any time in the future the result of the intellectual activity or the means of individualization are not subject to satisfaction by virtue of the law, because the satisfaction of such requirements entails a violation of the executability principle of a judicial act, because bringing the defendant to responsibility for each subsequent offense is possible only by filing a new statement of claim, but not by filing for execution the enforcement order that contains the abstract prohibition.

In this case, it should be noted that the prohibition, which the plaintiff requests for, is established directly by the law (Unnumbered Paragraph 3 of Paragraph 1 of Article 1229 of the C.C.R.F.).

The requirements for the withdrawal from the circulation and the destruction without any recovery for damages the tangible media, in which the result of the intellectual activity or the means of individualization is expressed, are also often dismissed by the courts, since the plaintiffs can not provide evidence indicating that the defendant has the counterfeit tangible media.

Now I suggest that we should consider an issue, why after all one should not claim the requirement for the recognition of the defendant’s acts for the use of the subject matter of intellectual property as illegal. To answer this question, I suggest that we should refer to the Code.

In accordance with of the C.C.R.F., the intellectual rights are defended in the ways stipulated by the Code, taking into account the essence of the violated right and the consequences of the violation of this right.

According to of the C.C.R.F., the defence of the civil rights is carried out by: the recognition of the right; the restoration of the state of affairs existing before the violation of the right, and the suppression of the acts violating the right or creating a threat of its violation; the recognition of the disputable transaction as invalid and the application of the consequences of its invalidity, the application of the consequences of the void transaction being invalid; the recognition of the meeting decision as invalid; the recognition of the act of the state authority or the local self-government authority as invalid; the self-defence of the right; the award of the execution of the obligation in kind; the recovery of damages; the award of a penalty; the compensation for moral harm; the termination or the change of the legal relationship; the non-application by the court of the act of the state authority or the local self-government authority that is contrary to the law; by other ways stipulated by the law.

In accordance with Paragraph 1 of Article 1252 of the C.C.R.F., the defence of the exclusive rights to the results of the intellectual activity and to the means of individualization shall be carried out, in particular, by imposing the requirements: 1) on the recognition of the right – upon the person, who denies or does not otherwise recognize the right, thereby violating the interests of the right holder; 2) on the suppression of the acts that violate the right or create a threat of its violation, – upon the person, who commits such acts, or who carries out the necessary preparations for them; 3) on the recovery of damages – upon the person, who has used illegally a result of the intellectual activity or the means of individualization without concluding an agreement with the right holder (a non-contractual use), or who has otherwise violated his exclusive right and caused him damage; 4) on the withdrawal of the tangible medium in accordance with Paragraph 5 of the said Article – upon its manufacturer, importer, keeper, shipping carrier, seller, other distributor, unfair purchaser; 5) on the publication of the court decision on the violation committed with the indication of the actual right holder – upon the violator of the exclusive right.

By implication of Article 12 of the C.C.R.F. and Part 1 of Article 4 of the Arbitration Procedural Code of the Russian Federation, the interested person being a person, whose rights or legitimate interests are violated or disputed, must choose such way of the defence of the violated right, which is stipulated by the law for a particular kind of the legal relationships, and which will allow in fact to restore the violated right.

The ways of the defence of the civil rights are aimed at ensuring the defence of the rights and freedoms and the restoration of the violated right, what follows, inter alia, from the decisions of the Constitutional Court of the Russian Federation of 27.05.2010 No. 732-O-O, of 15.07.2010 No. 948-O-O, of 23.09.2010 No.1179-O-O, of 25.09.2014 No. 2258-O.

The civil legislation does not limit the subject in the choice of the way of the defence of the violated right, in the meanwhile the person whose right is violated, by virtue of Article 9 of the C.C.R.F. shall be entitled to make this choice at his discretion, but the way of the defence chosen by the person should correspond to the content of the violated right and the disputable legal relationship and lead directly to the restoration of the violated right.

I believe that the above said Unnumbered Paragraph reveals the whole essence of the meaning laid down by the legislator, and should be analyzed by the person seeking the judicial defence, before formulating the petitionary part of the statement of claim.

If to express this idea in simple words, one should analyze the circumstances of the upcoming case and answer 2 questions:

• Will the requirement, which the court will satisfy, help me to restore the violated right?
• Is the claimed requirement abstract? That is, will the bailiff and executor of justice, having studied an operative part of the court decision, be able to execute this decision?

Continuing the consideration of the issue raised in the topic of the article, I think it is necessary to note that neither Article 12 of the C.C.R.F., nor Articles 1250, 1252, 1253, 1474,1515 of Chapter Four of the C.C.R.F. stipulate such way of the defence of the right as the recognition of the acts of the legal entities and the individuals, who are not the authorities exercising the public powers, or of the officials of such authorities as illegal.

In the case under consideration, the circumstances of the use of the particular subject matter of intellectual property without a permission of the right holder are not the legal facts that can be established in the manner stipulated by Chapter 27 of the Arbitration Procedural Code of the Russian Federation, and they relate to a basis, and not to a subject of the statement of claim.

Moreover, in this case it is not seen how the chosen way of the defence will lead to the actual restoration of the rights and the legitimate interests of the plaintiff in case of their violation by the defendant.

It is worth noting that the similar legal position is set out in Resolution of the Intellectual Property Court of 29.07.2016 in case No. A11-729/2015 (according to decision of the Supreme Court of the Russian Federation of 17.11.2016 No. 301-AS16-15604, the transfer of the cassation petition against this judicial act for the consideration in the judicial session of the Chamber for Commercial Disputes of the Supreme Court of Russian Federation was refused); Resolution of the Supreme Court of the Russian Federation of 04.02.2015 in case No. A40-9597/2014.

Thus, summarizing the above said, I would like to draw attention of all those, who, for one reason or another, is stepping a thorny path of the judicial defence of the rights of intellectual and otherwise property, to the fact that it is worth paying more attention to the choice of the ways of the defence of the violated right, to formulating the statements of claim in such way that they can be executed subsequently.

I believe that it is better to claim one clearly formulated requirement than perhaps to enumerate in the petitionary part of the statement of claim the whole Article 1252 of the C.C.R.F. in the hope that the court will satisfy at least one of these requirements.