As we previously reported, many disputes have since 11 July 2017 been excluded from the scope of the mandatory pre-trial disputes settlement procedure that took effect on 1 June 2016 in Russia. Certain types of IP disputes were not initially excluded from the procedure. Special regulatory arrangements were later adopted to address such cases.
Damages or exclusive rights infringement compensation claims
For claims for damages or compensation for exclusive rights infringements, the compulsory requirement to send a pre-trial demand letter has been preserved for cases in which the parties to disputes are legal entities or individual entrepreneurs.
Where sending a pre-trial demand is compulsory, filing a statement of claim is possible in case:
- of a total or partial denial of the claims; or
- there is no response to the demand letter within a period of 30 days from the date of sending such letter.
Trademark non-use invalidation actions
If an interested party intends to terminate the trademark of another party for non-use reasons, it must follow a new special pre-trial settlement procedure. Under the new procedure, the interested party must send a proposal to the trademark owner to: (i) apply for a waiver of the trademark rights; or (ii) enter into a contract on the alienation of such rights.
If no action is taken at the expiration of two months from the date of sending the proposal, the interested party has a right to start legal proceedings. The time limit set for launching such legal proceedings is 30 days from the end of the two-month period.
The above changes reflect the specific nature of IP-related disputes and enshrine the new rules in the IP legislation, taking into account the interests of both the IP rights holders and other stakeholders.
Despite the presence of some unresolved issues (such as, for instance, whether it is possible or not to propose other means for resolving disputes arising from non-use of trademarks and the potential for their abuses), the new rules can help reduce the number of disputes that reach the courts, as well as increase the number of cases of amicable settlement of such disputes.
We recommend our clients take into account these new procedures when devising their judicial strategies and tactics for handling these types of disputes.