The practice of the Court of intellectual property rights for the 1st quarter of 2016

The intellectual property and dispute resolution practice of Levant & partners law firm pays attention to a few interesting rulings of the Court for intellectual property rights.

The first case (A40-124810/2014) concerns the possibility of re-applying to the court if the violation of exclusive trademark rights continues.

The defendant illegally used images, confusingly similar to trademarks of the plaintiff, on his website.

The claim was rejected because the violation has already been the subject of dispute in another case in which the plaintiff had received compensation under the settlement.

The Court for intellectual property rights set aside the acts of the lower courts and sent the case for retrial.

The courts had to examine the content and duration of the posting relevant information on the website of the defendant, to establish whether an alleged offence is one-off or continuing.

If the information posted on the website previously, was still there, ones cannot admit that the plaintiff has exhausted the right to protection. Otherwise, the offender, by paying compensation for the infringement of the exclusive right to a trademark, can use it with impunity in the future.

In the other case (No. SIP-282/2015) the Court for intellectual property rights examined the issue of differentiation of fantasy trademarks and false marks, which lead the consumer astray (and therefore not subject to registration).

The applicant wanted to register the trademark “soft bread” in the category “alcoholic drinks”. Rospatent refused in registration, citing that the claimed designation is false. It indicates the type of product (bread) and his property (soft), which is not true in relation to alcoholic beverages.

But the Presidium of the Court for intellectual property rights has recognized that Rospatent’s position is wrong. The civil code does not allow registration of designations, representing or containing elements which are false or misleading, as trademarks.

The article of civil code says about designations that falsely indicate the properties of the product.

Designations, indicating the property not inherent for the product, which cannot be perceived as plausible by the ordinary, average consumer, are not false.

The designation of the goods and services that does not have signs of the plausibility is a fantasy character.

One designation, in respect of certain goods, may be false, in respect of other – fantasy.

For example, the designation “bread” in relation to the good “kvass” is a fantasy.

The third interesting case (A40-41816/2015) deals with the exclusive rights to the work, the separation of the concepts of citation and copying, the permissible amount of borrowing for educational purposes.

The publishing house filed a suit against the Institute, considering that the last illegally used in its training course works, violating the exclusive right of the publisher.

The first and appeal instance have decided that the citation of published works in the amount, justified by legitimate educational purposes, refused the claim.

The Court for intellectual property rights overturned the court acts and sent the case for retrial, indicating that the courts conclusion about permissible amount of citation is groundless.

Citing is the inclusion of one or more passages of one author’ work in a work of and by another author for illustration, confirmation or refutation of his statements.

Thus, the quote looks like one or more extracts from the works of other authors, based on which the citing author illustrates his thesis, confirm the assumptions, criticizes or challenges the arguments which he disagrees with.

This determines the difference between quoting and copying. Citation should not prevail over the amount of the author’s text.