Russian Patent Act

 

 

The complete Patent Act of the Russian Federation in the version of February 7, 2003, No. 22-FZ can be found under http://www.fips.ru/npdoc/law/patlaw00.htm

 

 

Court Cases concerning domain name

 

 

Court cases concerning domain names can be found under http://info.nic.ru/domains/law/trademarks_courts.html and http://www.internet-law.ru/index.htm (see “Intellectual Property”, No. 4, 2003, pg. 20)

 

 

One problem which has to be finally solved is the role of the register RosNIIROS. Very often the trademark holder either filed a law suit against the register or designated it as a third party. Most claims against the register were rejected except for the case mosfilm.ru.

 

New rules for the cancellation of domain names came into force on April 10, 2002. A registration of a domain name can be cancelled on the following grounds:

 

1.      upon a written statement of the administrator of the domain

2.      upon the basis of a court decision

a.      stating that the administering of the domain by the Administrator is infringing the rights of the plaintiff;

b.      and/or prohibiting the use of a part of the domain name which the plaintiff is holding the rights for.

 

The plaintiff has to request the registration of the cancelled domain name within 30 (thirty) days after the cancellation of the registration, if he wants to realize his preferential rights for registration of the cancelled domain.

 

 

The first request to cancel a domain name on the basis of a decision of the Moscow Arbitrage Court was miele.ru, which is held by the defendant OOO “Sters”. The cancellation request was based on the international trademark registration miele which was extended to the Russian Federation.

 

The Russian domain name holder did not use his domain name for goods covered by the international registration. Anyway, the court decided in favour of Miele since it had no possibility then to do business via the internet. The grounds for the decision was unfair competition.

 

A further case was baxter.ru on the basis of a trademark owned by Baxter International Inc. The register RosNIIROS participated at the law suit as third party. The trademark owner successfully requested the domain name owner to cease using the element “baxter” in the domain name baxter.ru. The defendant was OOO “Unitair”. The plaintiff applied his request to obtain a temporary restraining order for stopping any action of the defendant in respect to his domain name inclusively not to transfer his rights to other persons. RosNIIROS was asked to stop any functions of the domain name. The ground for the decision was unfair competition.

 

Further cases handled by the court were ntv.ru and coca-cola.ru. In 1999 OOO “Insait” had registered coca-cola.ru and sprite.ru. The negotiations of OOO “Insait” with Coca-Cola Company showed no acceptable result as no representative of the firm was found. Since the duration of sprite.ru  and coca-cola.ru  expired and was to be transferred. Therefore, Coca-Cola Company tried to file a law suit against the register, won the first two instances but lost in the final instance of the Court of Cassation. The case was re-transferred to the second instance and the plaintiff dropped the case against the registrar and asked only the court to cancel the domain name in accordance with the new regulations. The court followed the Coca-Cola request and cancelled the domain name in the register.

 

On the other hand, it is essential to have a clear decision of the court for one’s rights to stop using trademarks or firm names for all goods and services. This was not the case in a decision of the Kaliningrad District Arbitrage Court between OOO “Redo+” and OOO “Redo-servis”. OOO “Redo+” owned the trademark redo in kyrillic for certain goods of Class 9, services of Classes 37, 41 and 42, whereas OOO “Redo-servis” used the trademark partly for identic and similar goods and services. The court decided that the defendant has no rights to use redo neither in kyrillic nor in Latin letters for selling specific computer goods, programs and services only. This included using it in the internet. The registrar was not able to cancel the domain name and to stop its use on the basis of this decision since the court did not issue a clear decision having an unconditional disposition to stop any action. Therefore, the defendant continued to hold the domain name but he could not use it in offering special goods and services.

 

Finally, an unpleasant case regarding the domain name gianfrancoferre.ru, ferrejeans.ru and ferresport.ru owned by Vladimir Efimov. Gianfranco Ferre owned the trademarks GIANFRANCOFERRE and FERRE  which are well-known trademarks in the Russian Federation and throughout the world for clothing and accesoires. The trademark owner spent a lot of money for the advertisement of his trademarks in Russia. The Russian owner used the domain name for advertising his Moscow boutique in which he sold high-priced goods other than those of the trademark holder. The trademark holder filed a law suit at Kuntsev Town District Court in Moscow and asked to stop the use of his trademarks by the defendant and also his domain names gianfrancoferre.ru and ferrejeans.ru and   ferresports.ru. The third party was the registrar RosNIIROS. The case was finally settled amicably as the trademark owner was not completely on the winning path since the defendant presumably sold in his boutique among others goods of the Italian designer, too, and the result of the case was not predictable.