Non-use issues now examined in court

Russian Federation

Since December 2011 non-use issues are being examined in court. Previously, genuine use of a trademark had to be proved before the Patent Office - specifically, its Chamber of Patent Disputes. However, the following question arose: why should trademark examiners delve into commercial documents, invoices, contracts, customs declarations and other paperwork which do not have any, or very little, connection with trademarks?

The solution seemed obvious, but it took years to come to fruition. During the past 20 years, patents and trademarks in Russia were the realm of a small group of professionals - the courts and enforcement bodies had no connection whatsoever with intellectual property. However, as time went on, more and more IP disputes found their way to court, and the Moscow Arbitrazh Court had to set up a bench of judges to deal with IP cases. Other courts could not afford that privilege.

After several years of discussions, a decision was recently taken to set up a specialised IP Court. It will start operations in February 2013, although it is doubtful that this date will be observed. The decision to examine non-use issues in court may be regarded as a transitional measure on the way to the creation of the IP court.

The examination of non-use issues in court will be more costly than proceedings before the Patent Office's Chamber of Patent Disputes. Moreover, the procedural rules will be more complex. However, the court procedure should allow the plaintiff to recoup some of its expenditures from the losing party.

Earlier this year there was a drop in the filing of cancellation actions on the grounds of non-use; however, this spring, the increase in the number of filings was noticeable. The statistics have not yet been released, but based on the information available, one may assume that several dozen cases have already been filed. The first judgments are expected to be handed down soon.

Vladimir Biriulin, Gorodissky & Partners, Moscow

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