Protection of a Company's Exclusive Rights at Exhibitions in Russia

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When participating in exhibitions, including international ones, companies often face infringement of their patent rights, rights to means of individualization, and copyrights by competitors exhibiting their goods or services at the exhibition. Questions arise that require consultation with specialists.

1. What measures can the rightholder of intellectual property results, whose rights are being infringed, take?

ANSWER: The rightholder can take a set of measures established by the current civil (including civil procedure) legislation, and under certain conditions – also by the administrative and criminal legislation of the Russian Federation. The following primarily describes civil and civil procedure methods of protection, which are more characteristic of the sphere of commercial relations between business entities.

The main stages of civil law protection of intellectual property objects (IPOs) include:

Evidence Gathering
Seeking Protection for Violated Rights

Evidence Gathering - is a primary and critically important task: at the preparatory stages, it is necessary to gather the maximum amount of evidence, record the fact of the rights violation, and ensure the preservation of the collected evidence base, which can subsequently be used at the judicial or administrative stage of protecting the violated exclusive rights.

Methods of infringing exclusive rights to IPOs at an exhibition can be:

Placement of an exhibit containing signs of a counterfeit product,
Advertising, marketing, and offering for sale counterfeit products at the booth of an unfair exhibition participant,
Distribution of counterfeit product samples among visitors, etc.

Accordingly, evidence-gathering activities may include:

Photographing and videotaping the booth where counterfeit products are displayed.
Obtaining samples of products or promotional materials, brochures, commercial offers.
Questioning representatives of the infringing company (under the guise of a visitor to avoid provoking conflict or destruction of evidence).
sign it.
Notarial provision of evidence.
without urgent measures, subsequent presentation of necessary evidence to the court will become impossible or difficult).
on site in the manner prescribed by the said articles.
Art. 91 of the APC RF).

Seeking Protection for Violated Rights:

Appealing to the exhibition administration with a demand to dismantle the booth or remove counterfeit materials: the exhibition administration takes such measures upon presentation of court acts or law enforcement orders.
Serving a claim to the infringer directly at the exhibition demanding cessation of the infringement. This measure allows for a quick cessation of the violation and can be useful and even necessary in future court proceedings to identify the infringer's subjective attitude towards the committed offense and prove their guilt.
Filing a report with the police: depending on the nature of the violation, one can try to involve law enforcement agencies, but in practice, this rarely yields a quick effect during the exhibition.
Filing a lawsuit in court to protect violated rights.

If a company does not plan to immediately file a lawsuit to protect violated exclusive rights during the exhibition period, is it necessary to notarize the evidence of infringement collected at the exhibition? What is the general recommended approach?

ANSWER: Notarial provision of evidence is not a mandatory measure but is recommended. The law does not establish a list of admissible evidence on the basis of which a violation is established (Article 64 of the APC RF). Therefore, when resolving the issue of whether such a fact took place, the court, by virtue of Articles 64 and 68 of the APC RF, has the right to accept any means of proof provided for by procedural legislation.

If it is not about certifying information on the Internet, notarization of evidence is preferable. A notarial inspection gives the collected evidence increased strength in court. Traditionally, courts treat notarized evidence with greater trust, as the notary is an independent person with the necessary competence, able to confirm the time, place, and circumstances of evidence collection. It is recommended to immediately, upon detecting signs of an offense, summon a notary directly to the exhibition pavilion to draw up an inspection report of the booth. This is the most reliable way to record the offense.

3. Is it possible to file an application for a temporary judicial ban on actions related to the infringement of rights at an exhibition? If yes, which court should the application be filed with and what are the requirements?

ANSWER: A measure such as a prohibition to perform certain actions concerning the subject of the dispute is applied as part of interim measures provided for in Art. 91 of the APC RF. A temporary judicial ban can be imposed, for example, on the removal and destruction of product samples and documentation suspected of being counterfeit, related to the introduction of such products into civil circulation, beyond the exhibition grounds.

An application for an interim measure in the form of imposing a temporary ban on the performance of certain actions can be filed after the statement of claim (up until the adoption of the judicial act concluding the consideration of the case on its merits) or simultaneously with the statement of claim (Art. 92 of the APC RF). In the latter case, the application for the imposition of a ban is subject to consideration after the ruling on accepting the statement of claim for proceedings. Considering the essence of the stated claims and the type of requested interim measure, the issue of accepting such a statement of claim is decided by the court as soon as possible (clause 13 of the Plenum of the Supreme Court of the Russian Federation Resolution No. 15 of June 1, 2023, "On Some Issues of Courts Applying Measures to Secure a Claim, Interim Measures, and Preliminary Protection Measures"). Accordingly, the application for the imposition of a ban is filed with the same court as the main statement of claim.

As an alternative, can one apply to the court with a request to secure evidence concerning infringements at the exhibition?

ANSWER: Yes. One can apply to the court with a corresponding motion to secure evidence, although in practice this is quite difficult and requires certain speed of action. In accordance with the APC RF, one should apply to the same court where the main lawsuit to stop the infringement is filed. If there are grounds to believe that the presentation of evidence will subsequently become impossible or difficult (for example, after the exhibition the goods will be removed), the rightholder can file an application with the court to secure evidence before filing a lawsuit (APC RF Art. 72).

5. Can customs authorities, at the request of the rightholder of an intellectual property object, take measures against patent rights infringement?

ANSWER: No. In accordance with the EAEU Customs Code and Federal Law No. 289-FZ "On Customs Regulation in the Russian Federation," customs authorities can take measures to protect rights to trademarks, service marks, appellations of origin of goods, copyright and related rights. Patent rights (for inventions, utility models, industrial designs) are not included in the customs Register of Intellectual Property Objects (RIO). Customs does not independently monitor or detain goods at the border based on patent rights. The patent holder can fight the import of counterfeit products only after it has been imported into the territory of the Russian Federation through the court.

6. In the case of a lawsuit for patent infringement, can one simultaneously apply to the court with a demand to recognize the patent as invalid on the grounds of non-compliance with patentability conditions? Or are the recognition of patent invalidity and the arbitration claim considered by different authorities separately?

ANSWER: These procedures are separated and considered by different authorities.

• Lawsuit for patent infringement: Considered by an arbitration court. The court checks whether the defendant's product/production method infringes all features of the patented solution.

• Application for patent invalidity on the grounds of non-compliance of the invention, utility model, or industrial design with the patentability conditions established by the Civil Code of the RF, or the requirements provided for in clause 4 of Art. 1349 of the Civil Code of the RF, as well as non-compliance of the industrial design with the requirements provided for in Art. 1231.1 of the Civil Code of the RF: Filed with the Chamber for Patent Disputes (CPD), which is a subdivision of Rospatent (FIPS). It is this administrative body that makes decisions on patent invalidity on the specified grounds.

Interaction of processes:

The arbitration court does not have the authority to recognize a patent as invalid on the grounds provided for in clauses 1-3 of Article 1363 of the Civil Code of the RF. If, during the court proceedings for patent infringement, the defendant states that they are challenging the plaintiff's patent in the Chamber for Patent Disputes of Rospatent, then according to clause 142 of the Plenum of the Supreme Court of the RF Resolution No. 10 of April 23, 2019, "On the Application of Part Four of the Civil Code of the Russian Federation," while Rospatent is considering the objection against the grant of the patent, the court has the right (i.e., it may, but is not obliged to!) suspend the proceedings in the infringement case until the Chamber for Patent Disputes (and possibly subsequent judicial instances) makes a final decision on the validity of the challenged patent. Thus, these are two separate but often parallel processes.