Все новости от 23 июля 2004 г.

Russia overhauls IP protection

Valery Medvedev, Managing partner of "Gorodissky & Partners", explains how recent amendments to Russia's trade mark law will benefit rights owners and, opposite, examines the implications of the new Patent Law

One of the main reasons for amending the IP laws in Russia is the need to bring the law into conformity with international legislation, in particular with the provisions of TRIPs, as a compulsory condition for Russia's accession to the World Trade Organization (WTO). In addition, the amendments were necessary to resolve issues which for different reasons have not been solved since the previous laws were adopted in 1992, and to take account of the dynamically changing economic relations in Russia and abroad.

Conformity with TRIPs

The new Russian Patent Law substantially reproduces two provisions of TRIPs, both relating to compulsory licences. Article 10 broadens the patent owner's rights which are restricted by the compulsory licence, and gives the courts the power to grant compulsory licences. It should be noted that in more than 10 years since the previous Patent Law was implemented, there have been no cases of compulsory licences being granted in Russia.

The new Patent Law reproduces two more TRIPs provisions: first, the subject matters of inventions are divided into "products" and "methods" and, second, "industrial applicability" is excluded from the conditions of patentability in respect of designs. The exclusion of "use of a known means with a new purpose" from the subject matters of inventions is also of importance. This will result in a transition to the rules existing in a major part of other jurisdictions, according to which a patent can be granted for an invention relating to both the original use of a novel product or method, and a use with a new purpose. In other words, the new Patent Law provides for the possibility of granting the patent for a group of inventions, one of which relates, for example, to a new substance, and another to its use. This was not allowed under the previous Patent Law.

Trade mark amendments

The new Russian Trade Mark Law also includes two provisions derived from TRIPs.

Article 6 (Absolute reasons for refusal of registration) reproduces the TRIPs provision that a registration of a trade mark shall be refused or invalidated if it contains or consists of elements protected as geographical indications identifying wines or spirits in a country which is party to an international treaty to which the Russian Federation is a member. This article concerns trade marks identifying wines or spirits which do not originate from the territory of a country where there is a specific quality, reputation or other characteristic which is determined by the origin of the wines or spirits. This provision is directed at protecting rights and lawful interests of traditional manufacturers of wines and spirits which are in wide demand and originating from widely known territories.

The new Chapter 2.1 of the Trade Mark Law, comprising two Articles 19.1 and 19.2, regulates the legal regulations governing well-known trade marks.

The Chapter reproduces the TRIPs provision that the exclusive right of the owner of a well-known trade mark, if it is previously registered as such, applies not only to identical goods or services with respect to which the trade mark was registered, but also to similar goods or services, where such use would result in a likelihood of confusion, if the use of that trade mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trade mark and provided that the interests of the owner of the registered trade mark are likely to be damaged by such use.

The new Russian Patent Law

According to Article 3, the patent owner shall be entitled to extend the term of validity of a patent from 20 to 25 years in respect of the inventions relating to a medicine, pesticide or agrochemical, the use of which requires permission of an authorized state body. This provision is directed at full or partial compensation for the actual reduction in the term of validity, caused by the approbation of the aforementioned means to be conducted.

Article 4.1 defines "invention" through the concept of "technical solution", and paragraph 2 of the Article provides for the open list of particular kinds of solutions which are not considered "technical solution" and for this reason cannot be recognized inventions.

The list of solutions that do not relate to technical ones and are, therefore, not recognized inventions repeats the contents of the respective provisions of the European Patent Convention. Excluded from patentability are inventions relating to algorithms, as well as "planning" solutions relating to layouts of constructions, buildings and territories.

Article 6.1 excludes "industrial applicability" from conditions of patentability in respect of designs.

Article 10.1 establishes the the patent owner's exclusive rights, including the list of actions which he can allow or not allow to third parties. The actions, in contrast to the former language, include the use of a device, in operation (use) of which in accordance with its purpose the patented method is automatically accomplished.

Article 10.2 specifies that the equivalence of features used to reveal the fact of illegal use of a protected invention must be known, and it must be known before the date of performing the actions of illegal use of the invention.

Article 11 specifies that the legal marketing of a product abroad, in which a patented invention, utility model or design is used, shall not be considered to exhaust the patent owner's rights.

Article 21 establishes another procedure of substantive examination. First, the term for filing a request for substantive examination can be extended for two months provided that the request is filed before the expiry of three years from the filing date.

The term for submission of the requested materials can be extended by the Russian PTO for no more than 10 months from the date of its expiry, while a longer extension can be provided with the proviso that the very specific reasons for impossibility to meet the term are confirmed.

Before taking the Official Action, the Notification shall be forwarded by the Russian PTO to an applicant about the results of examination of the claimed invention with a request to submit arguments in respect of the reasons stated in the Notification. This provision substantially establishes the responsibility of the Russian PTO to notify the applicant about the grounds of the drafted Decision of Refusal and the right of the applicant to submit his response to such a draft Decision.

And finally, an important amendment deals with the right granted to an applicant to oppose a Decision of Grant with the Chamber of Patent Disputes.

Article 30.1 provides for a grace period associated with the payment of patent fees. If the validity of a patent was terminated in advance due to the failure to pay the maintenance fee, the patent can be renewed at the request of a patent owner, which can be filed within three years from the date of expiry of the term for payment of the maintenance fee, but before the expiry of the term of validity of patent. Any party which has started, in the period of the temporary termination of the patent, to use the invention, utility model or design, or made the necessary steps to use it, shall keep the right for further free use of it without widening the scope of such use (the right of after-use).

Article 35 prolongs the term for filing a patent application abroad from three months after filing the national application with the Russian PTO to six months.

Protection for labels introduced

The new Article 4.2 (Exclusive right to a trade mark) supplements goods and their packages having a marking protected by a registered trade mark that needs permission of the right holder, with labels for the goods. By this is meant that the right for a trade mark registered in respect of some goods applies not only to the goods and packages, but also to the labels for the goods. The goods, labels and packages of the goods bearing, without authorization, a trade mark or a similar sign where such use would result in a likelihood of confusion, shall be considered as counterfeit trade mark goods.

The new Law also says that unauthorized use on the internet of a domain name that reproduces a registered trade mark or a similar sign, where such use would result in a likelihood of confusion, amounts to infringement of the right for the trade mark, if the goods are sold or other actions are performed associated with marketing of the goods at the virtual address. This provision should end the non-uniform court practice in Russia interpreting the relationship between a trade mark and domain name, and fix legally the practice that has already been established to a certain extent.

Article 6.1 (Absolute grounds for refusal of registration) includes the provision relating to the distinctiveness acquired by a sign in the course of its use as the circumstance to relate the sign to those eligible for protection. This provision, widely used in many countries, has been practised by the Russian PTO for quite a long time, because it is based on the "nature" of the distinctiveness of designations.

Article 7 explained

Article 7 (Other grounds for refusal of registration) establishes the possibility of granting legal protection to a trade mark similar to a mark having an earlier priority date, where its use would result in a likelihood of confusion, if the proprietor of the earlier mark gives consent (that is, it provides for a legalization of "letters of consent").

Article 7 also changes the provisions for opposition of a protected firm's name to a registered trade mark. First, it is specified that only a trade mark identical, not similar, to the firm's name, cannot be registered. Second, the provision of knowledge of the firm's name has been excluded: that is, any protected firm's name can be opposed, not only a name which has gained a wide knowledge. It is further specified that the firm's name can be opposed to the registered trade mark provided that the right to the firm's name originated before the priority date of the trade mark. The provision as a whole provides for just protection of the rights and legal interests of proprietors of any firm's names, not only those widely known.

Article 10 (Examination of application for a trade mark) establishes more stringent terms for extending the time period for submission of the requested materials: the time period can be extended by no more than six months at the applicant's request, and by a longer time if valid reasons are confirmed. This Article also reproduces one of the three TLT provisions relating to division of a trade mark application at the stage of examination of the originally filed trade mark provided that goods or services claimed in the application are non-uniform. This provision creates favourable conditions for applicants when the Russian PTO is going to allow a registration of the originally filed mark only in respect of part of the goods or services. Such a Division of the application will permit, without delay, registration of the mark in respect of part of the goods or services, while the other part may be subjected to the procedure of contestation of the Russian PTO decision to refuse registration of the mark.

Article 13 (Appealing the decision in respect of application and reinstatement of missed terms) provides for the establishment of the Chamber of Patent Disputes which has power to consider objections against the official decisions taken within examination of applications for trade marks, inventions and other subject matters, objections against grants of titles of protection for inventions, trade marks and other subject matters, and consideration of some other disputes. The Chamber is established instead of the Board of Appeal and the High Patent Chamber provided for by the previous Patent and Trade Mark Laws.

Article 17 (Introduction of amendments into registration) reproduces the TLT provision relating to the division of a registered trade mark at the stage of attacking the validity of its registration. This provision allows the dispute to be held only in respect of part of goods or services, while the validity of the registered trade mark in respect of the other part will continue irrespective of the dispute result.

Article 22.3 (Use of trade mark and consequences of its non-use) limits the term of uninterrupted non-use of a trade mark as a reason for the advanced invalidation of its legal protection from five to three years, and specifies the use of the trade mark three years after its registration, but before three years has expired from the filing date.

Trade mark exhaustion

Article 23 (Exhaustion of rights based on registration of a trade mark) specifies that the marketing of goods shall be in the territory of the Russian Federation only. This amendment excludes the exhaustion of rights in cases when goods marked by the trade mark were legally marketed at the territory of a foreign country and then imported to the territory of Russia.

Article 28 (Invalidation of registration of a trademark) and Article 29 (Revocation of registration of a trademark) reproduce the provisions of Article 6septies of the Paris Convention providing for invalidation of legal protection of a trade mark in the name of the agent or representative of the proprietor of a mark in one of the countries of the Paris Convention, without such proprietor's authorization. It is stipulated that the disputes shall be considered by the Chamber of Patent Disputes. This provision has not been applied in Russia until now, because no state body authorized to consider the disputes was set in the Russian legislation.

These articles also establish that the legal protection of a trade mark may be invalidated fully or partly if the actions of the proprietor related to the trade mark registration are considered by an antimonopoly authority or court to be unfair competition. Along with this provision, the Law on Competition and Restriction of Monopoly Activity at Commodity Markets establishes a corresponding provision (Article 10) that the antimonopoly authority is entitled to make a decision on invalidation of the trade mark registration if the proprietor's actions related to the mark registration have been considered unfair competition. These provisions are directed at suppressing pirate registrations, where a trade mark originally used by one company is registered in the name of another entity which knew of the use and obtained the mark only in order to sell (assign) it to the original owner.

Article 46.3 (Responsibility for illegal use of a trademark and appellations of origin) establishes an additional sanction for the infringement of the exclusive right to a trade mark - destruction of the infringing goods, labels, packages at the infringer's expense. This will happen if it is impossible to remove the trade mark which is unlawfully affixed except in cases when the infringing goods are appropriated by the State or transferred to the right holder at his request for repayment of damages or in order to destroy them subsequently.

Article 46 provides for the additional right of the trade mark proprietors to demand from the person illegally using the trade mark, instead of damages for infringement, the payment of a compensation decided by a court in the amount of between 1,000 and 50,000 minimal salaries that correspond to 3,000 and 160,000 US dollars.

November 2003
http://www.managingip.com