On 1 July 2017, the Russian President signed into law a set of amendments to the Russian Civil Code as well as the Russian Code of Arbitrazh Procedure. Some of these amendments affect the pre-trial demand procedure applied in IP infringement and trademark non-use cancellation cases. The law comes into force on 11 July 2017.
What the Law Says
IP Infringement Cases
Pre-trial demand requirements, which were introduced for the majority of court cases considered by Arbitrazh (state commercial) courts back in June 2016, whereby prior to filing a court action, a claimant must first serve a defendant with a pre-trial demand, shall be substantially limited in relation to IP infringement cases. This requirement will now only apply to claims seeking compensation of damages or payment of statutory IP infringement compensation.
Non-monetary claims, such as recognition of rights, court injunctions prohibiting unauthorized use, seizure of infringing products and publication of a court judgment, are expressly exempt from the pre-trial demand requirements.
Trademark Non-Use Cancellation Actions
Pre-trial demand requirements are now extended to trademark non-use cancellation actions. Before filing a non-use cancellation action, a party interested in terminating another party's trademark due to its non-use must first send the mark's owner a pre-trial demand requesting either (i) voluntary abandonment of the trademark fully or in part or (ii) its partial or full assignment to the interested party. Such a demand shall be sent both to the trademark owner and its counsel indicated in the trademark registry. It may be sent no sooner than three years from the trademark’s registration date.
If, within two months from the request, the trademark owner does not assign the mark or file a request to terminate its registration with the Russian trademark office, the interested party has 30 days to file a non-use cancellation action with the IP Court. Should the claimant fail to do so, a new request to the trademark owner may be sent no sooner than three months after the first one.
The IP Court will take into account evidence of use for the three years preceding the date of the interested party's pre-trial demand. The trademark is deemed cancelled after the IP Court's decision comes into force.
Actions to Consider
- The law does not specify the manner in which to deliver a notice. Current practice is to deliver the letter in person by courier or by registered mail with confirmation at delivery.
- Before sending a notice to the infringing party, IP owners should properly secure and document all evidence of infringement that may be withdrawn by the infringer further to the notice.
- We recommend describing claims in the pre-trial demand in a precise manner and as close to the claims of the future court action as possible.