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News-Archiv

01.10.2009
Russia

Case Law of the Russian Arbitration Courts


I. Trademarks

Courts still use as a guideline two decisions of the Supreme Arbitration Court of the Russian Federation (the SAC) of July 2006. These are firstly the ruling of the Presidium of the SAC No. 2979/06 of July 18, 2006 in the case of “Невское“ [“Nevskoye”] vs. “AMRO Невское“ [“AMRO Nevskoye”]. Deciding on the dispute the SAC stated that “there is a risk of confusion, if one trademark can be taken for the other one or if the consumer understands that not one and the same trademark is meant but thinks that both trademarks are owned by the same producer”. Such a risk depends on 1) the distinctiveness of the trademark having an earlier priority; 2) the similarity of the trademarks under comparison and 3) assessment of the similarity of goods and services designated by the trademark.

In ruling No. 3691/06 of July 18, 2006 in the case “NIVEA” vs. “LIVIA” the Presidium of the SAC indicated three further important criteria:

  1. for considering trademarks similar it is sufficient that there is the risk of confusion and not the fact that the trademarks have been really confused. The presence of such a risk can be determined in particular on the basis of the results of public surveys submitted by the trademark owners;

  2. it is necessary to assess the similarity of goods because it influences determining whether or not there is a risk of confusion of trademarks;

  3. the presence of a series of trademarks (i.e. trademark groups of the same owner having identical elements) as well as also a long-time use thereof on the market increase the distinctiveness.

Ruling of the Presidium of the Supreme Arbitration Court of the Russian Federation No. 10458/08 of February 3, 2009

The Center Excise Customs Office (hereinafter referred to as the customs) has lodged to the Arbitration Court of the city of Moscow an action requesting to make the limited liability company “Genesis” (hereinafter referred to as the company) liable to administrative sanctions provided by Art. 14.10 of the Russian Federation Code of Administrative Offences (hereinafter referred to as the CAO RF).

As a third party which does not raise independent claims there has been involved the firm “Porsche AG” (Germany) (hereinafter referred to as the firm).

With its Decision of March 28, 2008 the Arbitration Court of the city of Moscow complied with the request of the customs, the company was charged with payment of 30 000 Rubles administrative penalty and confiscation of the vehicle “PORSCHE CAYENNE S”.

With its Ruling of May 12, 2008 the Ninth Arbitration Appeal Court maintained the Decision without amendments.

The company filed a petition to the Supreme Arbitration Court of the Russian Federation for a supervisional re-examination of the above court actions requesting to reverse the court actions as the courts have applied the laws wrongfully and reject the customs’ claim.

The customs and the firm requested in their responses to the petition to maintain the decisions without amendments.

Having examined the substantiation of the arguments indicated in the petition, responses thereto as well as of the pleadings of the representatives of the parties at the hearing, the Presidium is of the opinion that the petition is subject to satisfaction because of the following reasons.

As established by the courts, on October 28, 2007 the company imported the vehicle “PORSCHE CAYENNE S” according to the foreign-trade contract No. 001/07 of 10.03.2007 and invoice No. 05/07/07-RTXO13 through the Vyborg customs. The vehicle was in non-usable condition and declared on 17.12.2007 for customs clearance according to the cargo customs declaration No. 10009070/171207/0003120.

The limited liability company “Porsche Russland” being the owner of the exclusive license for the use of the trademarks “PORSCHE” and “CAYENNE” registered at the Russian Patent Office on the territory of the Russian Federation lodged a claim about trademark rights infringement at the customs.

With regard to said fact the customs made the Ruling No. 10009000-1347/2007 of 21.12.2007 about the initiation of proceedings referring to an administrative offence, an administrative investigation was carried out resulting in the minutes of 21.02.2008 about an administrative offence.

On the basis of said circumstances the customs requested the arbitration court to make the company liable to administrative sanctions provided by Art. 14.10 of the CAO RF.

The courts satisfied the customs’ claim proceeding from the regulations of Art. 4 Part 2 of the Law of the Russian Federation No. 3520-1 of 23.09.1992 “About trademarks, service marks and designations of origin” (hereinafter referred to as the Trademark Law) and came to the conclusion that because of the import of goods labeled with a trademark without consent of the right owner into the territory of the Russian Federation the company should be made liable according to Art. 14.10 of the CAO RF.

However, the courts did not consider that according to Art. 14.10 of the CAO RF legal persons may be ordered to pay an administrative penalty (from 30 to 40 thousand Rubles) with confiscation of subject matters containing an illegal reproduction of a trademark, service mark or designation of origin.

In the present case the vehicle „PORSCHE CAYENNE S“ being the subject matter of the infringement and confiscated upon the court’s decision had been produced by the right owner of trademarks of the same name and thus does not show any signs of an illegal reproduction of trademarks. Therefore, the company cannot be made liable according to Art. 14.10 of the CAO RF for the importation of the vehicle into the territory of the Russian Federation.

Under said circumstances the court actions in dispute contradict the unity in the interpretation and application of the laws by courts and thus shall be reversed according to Art. 304 Item 1 of the Arbitration Procedure Code of the Russian Federation.

On the basis of the above and according to Art. 303, Art. 305 Part 1 Item 3, Art. 306 of the Arbitration Procedure Code of the Russian Federation the Presidium of the Supreme Arbitration Court of the Russian Federation decided:
- to reverse the decision of the Arbitration court of the city of Moscow of 28.03.2008 in the case NO. A40-9281/08-145-128 and the ruling of the Ninth Arbitration Appeal court of 12.05.2008 in the same case;
- to reject the request of the Center Excise Customs Office about making the limited liability company “Genesis” liable to administrative sanctions provided by Art. 14.10 of the Russian Federation Code of Administrative Offences.

Concerning the question whether the parallel import constitutes an infringement of the rights of a trademark owner according to Art. 1484 of the Civil Code there are contradicting decisions of the Arbitration Courts:

According to the decision of the 9. Arbitration Appellation Court, Moscow, of September 28, 2009 (No. A40-2250/09) parallel import does not constitute a trademark infringement, according to the decision of the 12. Arbitration Appellation Court, Saint-Petersburg, of November 6, 2009 (No. A56-20519/2009) it does constitute a trademark infringement.

II. Patent Law

Excerpt from the Information Letter of the Presidium of the Supreme Arbitration Court of December 13, 2007

If there exist two patents for utility models having identical or equivalent features indicated in the independent claim, the actions of the owner of the patent with a later priority date with regard to the use thereof may not be considered an infringement of the patent with an earlier priority date before the patent with the later priority date will be nullified according to the established procedure.

A limited liability company lodged an action to the arbitration court against an individual entrepreneur with regard to cessation on the infringement of exclusive rights to a utility model.

As an argument of the claim the plaintiff indicated that in the manufacture of products the defendant uses the utility model patented by the plaintiff.

The defendant did not accept the claim and explained that he also owns a patent for a utility model and that is said utility model that he uses in the manufacture of products. The individual entrepreneur stated that he uses a different technical solution as the plaintiff’s one in the products manufactured.

The court complied with the claim because of the following reasons.

The plaintiff owns exclusive rights to a utility model having an earlier priority than the defendant’s utility model.

A utility model protected by a patent shall be considered used in a product or process, if the product shows and the process uses each feature of the utility model according to the independent claim or an equivalent feature thereto, which became known in the given field of technology before the actions indicated in Art. 10 Item 1 of the Patent Law have been committed with regard to the product or process.

According to the expert’s conclusion resulting from the expertise appointed by the court each feature of the independent claim of the plaintiff’s utility model is used in the product manufactured by the defendant.

No contract about the transfer of exclusive rights to the use of the utility model was made by the plaintiff and the defendant.

Under said circumstances the defendant’s actions with regard to the use of the plaintiff’s utility model represent a patent infringement.

The cassation court reversed the decision of the court of the first instance and rejected the claim with the following argumentation.

The court of the first instance has not considered that the plaintiff and the defendant have registered rights to the utility models. According to the expert’s conclusion the defendant used each feature of the independent claim of the plaintiff’s utility model in the manufactured product, however, he is simultaneously the owner of rights to the utility model with the same features of the independent claim.

If there are present several protective documents to utility models having identical or equivalent features indicated in the independent claim, the nullification of any of said patents lies in the competence of the Chamber for Patent Disputes and shall be decided according to Art. 29 of the Patent Law.

If one of the patents has been nullified, the owner of the other patent has the right to request for protection of his rights at a court in particular by claiming a compensation for the complete period when his patent has been used under consideration of the fact that nullification of a patent means that the patent becomes invalid from the date of filing the application for grant of a patent at the Patent Office.

If there exist two patents for utility models having identical or equivalent features indicated in the independent claim, the actions of the owner of the patent with a later priority date with regard to the use thereof may not be considered an infringement of the patent with an earlier priority date before the patent with the later priority date will be nullified according to the established procedure.

Note: The Supreme Arbitration Court issued an analogous decision on December 1, 2009 in an invention patent case (No. 8091/09).