The annual St. Petersburg International Legal Forum (LF) was held on May 27-30 this year and was attended by Prime Minister Medvedev, several high-level government officials, representatives from several countries, law professors and practitioners. The mission of this state-sanctioned legal forum is to discuss “today’s most pressing legal issues, which encompass social and economic challenges worldwide.”
At a session focused on unfair use of trademarks, the chief judge of the Russian Intellectual Property Court, Ludmilla Novoselova, shared the Court’s views. In a country where abuse of trademark rights is quite commonplace, the chief judge acknowledged that this is a most pertinent issue for brand owners. She said that, for the Court, any practices that are seen to be in bad faith are of interest to the Court in its evaluation of the rights of legitimate domestic and foreign entrepreneurs.
Judge Novoselova recounted that, in the two years since the Court was created, they have heard dozens of cases where bad faith or “parasitic behaviour” were elements associated with either the improper registration or assertion of a trademark in Russia. The IP Court hears both appeals from trademark cancellation cases decided at the first instance by the Chamber for Patent Disputes, as well as appeals from decisions made by the Federal Anti-monopoly Service (FAS). It also hears cassation appeals from trademark infringement cases decided by the Commercial Court.
The honorable chief judge emphasized that in cancellation and infringement cases, as well as in FAS unfair competition cases, the IP Court is most interested to know if there are elements of bad faith or parasitic behaviour associated with the case.
Acts amounting to unfair competition fall within the jurisdiction of both the FAS and the IP Court. The Court is empowered to consider in this regard both Art.10bis of the Paris Convention and Art.10 of the Civil Code of the Russian Federation. Under Art 10bis, to which Russia is a signatory, Russia is to forbid all acts of such a nature as to create confusion by any means with the establishment, the goods, or the industrial or commercial activities of a competitor. Under Art. 10 of the Civil Code, the IP Court has jurisdiction to deny the use of a civil right, viz. an improperly registered trademark registration for the purpose of restricting competition or abusing a dominant position.
Bad faith, she said, was not typically proven by way of direct proof of the same. Rather, bad faith is usually established by way of circumstantial evidence relating, for example, to a prior business relationship between the two parties (manufacturer and importer or distributor) or likely prior knowledge of an established brand in the global marketplace. Evidence of bad faith must predate the application date of an impugned trademark registration.
It was reassuring to hear that the new IP Court wholeheartedly embraces giving due regard to conduct which is seemingly in bad faith in trademark infringement and cancellation cases. The chief judge also mentioned that there is a need to more clearly delineate the line of demarcation between behaviours that should be deemed to be unacceptable and those which should not.