For the last 20 years, at least, there were no legal conditions that had to be met prior to filing a trademark or patent infringement lawsuit in Russia. This will change this coming June, after which prospective plaintiffs will need to send a demand letter to the suspected infringer before an action is initiated.
New Federal Law no 47-FZ “On Introduction of Amendments to the Commercial Litigation Code”, dated 2 March 2016, stipulates that a civil law dispute can be filed with the commercial court only after the parties have attempted pre-trial resolution of the issues, and in any case, no earlier than 30 calendar days from the date when a demand letter was sent.
This new requirement is incorporated into par. 5 of Article 4 of the Commercial Litigation Code. The Code provides some exceptions to the rule. For example, preliminary notification is not required for cases that relate to:
- facts of legal significance;
- awards of compensation for violation of right to due process or execution of legal act in reasonable term;
- corporate disputes;
- protection of rights and legal interests of groups of persons;
- trademark non-use cancellation actions; and
- challenges of arbitration awards.
Generally speaking, the new Russian law does not regulate the content of the pre-trial demand letter. Yet, it is very important to have the letter drafted properly to demonstrate to the court that the pre-trial procedure was observed by the plaintiff. Failure to do so would give the court discretion to dismiss the action or deny part of the claim.
In contract cases, the parties to the contract should spell out in the demand letter the mechanism for pre-trial resolution, the breach(es) in question, any possible terms of settlement and the deadline for doing so.
In intellectual property (IP) infringement cases, we recommend including at least the following in any demand letter:
- the names and details of the parties;
- a clear title of the demand letter in Russian;
- the IP right in question and a copy if it is a registered property;
- a brief summary of the acts that constitute infringement and for patents, identify the claims infringed;
- the desired relief including monetary sums, injunctions, etc; and
- the deadline for resolution if the claimant wants it to be different from the statutory term of 30 days.
The idea behind the pre-trial resolution procedure is to ease the burden on the courts. But it may not always work to the benefit of a plaintiff. For example, in a domain cyber-squatting case this procedure will likely do more harm than good. After receiving a demand letter, a cyber-squatter can then transfer the impugned domain registration to a foreign jurisdiction or simply to a new owner in a remote location in Russia, thus hampering the efficient retrieval of the domain. One option to circumvent this maneuver would be to file for a preliminary injunction simultaneously with sending the demand letter. However, it is yet to be seen whether a court would grant the motion before the deadline for response set forth in the demand letter.
In patent cases, the patentee will have to dispatch a demand letter to an alleged infringer giving that person 30 days to respond. In that waiting period the recipient of the letter will be in a position to file a patent revocation action in the patent office without giving advance notice. However, such a pre-emptive step taken by an infringer will not deprive the patentee from its right to move ahead with the infringement action after the initial 30 day waiting period.
While this change in Russian law is intended to relieve the workload of the courts, time will tell whether or not this change could also unintentionally relieve a plaintiff of certain IP rights.