Patenting with PATENTUS in Russia
For Tatiana Sergunina intellectual property has always been an interesting sphere of law she dreamed of when she was a student. Her dreams are now fulfilled as she helps people to protect their intellectual rights; in this insightful interview, we see her passion being wonderfully expressed whilst detailing the movements in Russia’s IP legal sphere and where she hopes to see it advance to.
Have there been any recent developments in Russia regarding IP law and what developments do you hope to be implemented in the future?
Three years ago, in 2014, Part 4 of the Civil Code of the Russian Federation “Intellectual Property Governing Law” was considerably amended. For instance, instead of registration of agreements, we started registering transfer and provision of rights, the principle of fault-based liability of the intellectual right violator was established, the terms of sub-invention, utility model and industrial design were introduced; violation of patent rights now implies a penalty in the form of compensation and the list of essential features for industrial models was removed.
Besides legislative changes, several meaningful court rulings of the supreme judicial authorities of Russia have recently been adopted. For example, in 2015 the Supreme Court of the Russian Federation determined that in case the right holder does not use its trade mark, its action related to recovery of compensation from another entity using any similar mark are regarded as abuse of right.
At the end of 2016, the Constitutional Court of the Russian Federation issued a decree in accordance with which the amount of compensation for violation of exclusive rights can be reduced as compared with the minimal limits stipulated by the legislation. This regulation will cause changes of the current legislation.
Such judicial precedents considerably influence the judicial practice, our professional community. We learn to work according to these new rules, communicate these positions to our customers, use them by developing strategies for our cases.
For example, in April, the Supreme Court will consider one of our cases and express its stance on the issue to whether it is possible to reduce the compensation amount as a double cost of counterfeited product. Until now, one applied the court rules in accordance with which such a compensation could be reduced, however due to heightened interest, the Supreme Court may express an opposite opinion.
What has been your most challenging case yet and how did you overcome that?
It was a patent dispute. Our client filed a lawsuit to prohibit use of the utility model; their opponent admitted using the model, however referred to the fact it held a prior common law right. The case implied the fact that the opponent did not manufacture, but only sell the disputed products. The issue whether the seller can acquire a prior common law right was not previously settled in Russian practice. After holding several difficult court sessions, we managed to prove that the prior common law right can be acquired only by the product manufacturer; this viewpoint was established by court ruling in the end. As a result, we won the case and the counterclaim to recognise the prior common law right was fully dismissed.
What are they key aspects you look at when taking on a case that challenges RUPTO (Russia’s Federal Service for Intellectual Property)? How do you know when a case is strong enough to challenge this?
Most frequently, we go into litigation with RUPTO when it deals with cases on challenging the decisions made by the Chamber for Patent Disputes of RUPTO. When challenging them, we consider what factual circumstances and documents were disregarded and pay attention to if RUPTO performed any procedural violation when considering the case. If there are any of the above-mentioned circumstances, we admit that the decision is not strong enough and can be challenged in court.
Furthermore, it is not possible to file for falsification of documents in RUPTO, however it is possible in court. One is prohibited to make references to unfair competition on behalf of trademarks or patent owners in RUPTO, and there is such a possibility in court. All this significantly strengthens our positions in court.
There is another problem related to the fact that sometimes RUPTO deals with settlement of disputable issues in a very formal way. The court can be more flexible in this respect, which is frequently secured by us when going into such litigations. In the whole, RUPTO and the Court have different approaches to the same questions, and that is what we successfully apply.
With technology rapidly developing, how much pressure is this placing on copyright laws? How do you expect it to develop and change in Russia, and internationally?
Not long ago, a package of resonant anti-counterfeiting laws governing protection of copyrights on the Internet was adopted. The first law took effect on 1 August 2013. It allowed pre-trial blocking of websites positing unlicensed audio-visual products.
Currently, the law governs a pre-trial procedure of limiting an access to information distributed with violation of copyright and/or associated rights. This sphere also includes issues related to book publishing, music and a set of other sphere of intellectual rights, except for photographic products and products obtained by the ways that are similar to photographing.
Moreover, an expanded version of the anti- counterfeiting law provided for the procedure of “lifelong” site blocking – for a repeated violation. So, for example, in 2015 the Moscow City Court blocked access to a large portal (Rutor.org) and 10 other resources on which counterfeiting content was posted. It was the first “lifelong” blocking of sites in the history of the Russian judicial practice. In general, the Moscow City Court quite willingly blocks websites containing illegal content.
It is obvious that the internet has increased opportunities to violate intellectual rights and it takes only a second to perform an illegal action or even a crime in this sphere. At the moment, our society faces a necessity to govern the issues related to intellectual property protection on the internet by ensuring a balance of interests both of right holders and users who, in their turn, are entitled to access scientific and artistic works.
Noting such a tendency that many states do their best to create such a controlling system, will provide users an opportunity to download licensed works for a small fee: movies, music, pictures, software, etc. It will be more convenient for the user to pay for high-quality content than to resort to the services of suspicious websites providing unlicensed and not always high-quality products. Probably, this strategy can help to improve the legal consciousness of the population, and the problem of violation of rights will cease to be so acute.
What are your clients main concern during a (potential) case, and how do you reassure them?
It depends on the case. It often happens that we have to take an extraordinary position on the case, refer to the clauses for which no stable practice still exists. For example, in a case related to the prohibition of using a trademark where we represent the Defendant’s interests, we refer to the Plaintiff’s exhaustion. It is obvious that the client worries if the court shares our position. As for the cases on non-use of rights, clients often use a trademark not by themselves but entrust this task to their partners, affiliated persons, which causes certain difficulties by proving use of the trademark, which also bothers the client. In such cases, we refer to the fact that the law allows using a trade mark “under the right holder’s control”. Thanks to large part of our activity, the practice of this application becomes more homogeneous. We calm our clients by reassuring them that we have the law on our side, whatever we refer to.
You have been in intellectual property for five years now; what are you upcoming goals in the future for your career and clients?
My main goal is to constantly improve my skills and knowledge in the sphere of intellectual property. In spite of the fact that I have been in this sphere for five years now and have had good teachers which allowed me to obtain a broad expertise, many things still surprise me as every new case is a special world, we always prepare the unique position for every new case. In the future, I want to become the best specialist in the sphere of intellectual property in Russia. Intellectual property right is still young enough in our country, which allows us to “create” the practice to a certain extent, and my goal implies the creation of this practice, as it should comply with both legal requirements and the so-called justice of heaven. As for clients, I also try to constantly improve myself to bring our company to a new level of service, the likes of which we wouldn’t see in Russia. Certainly, I also make mistakes, sometimes due to stress and a high load, but my objective – self-improvement – shall always be present, otherwise what is the sense in all our work?