Before 2011 non-use cancellation requests were filed at the Chamber for Patent Disputes, which was subject to the jurisdiction of Rospatent, and its decisions could be appealed to the Moscow Arbitration Court.
From 8th December 2011, however, disputes concerning non-use became the responsibility of the Court on Intellectual Property Rights. On 2nd July 2013, the Plenum of the Supreme Arbitration Court of the Russian Federation approved the start of the new IP Court and from July 3rd 2013 non-use cancellation actions should be filed to the IP Court.
For the period between December 8, 2011 and 3rd July 2013 non-use disputes were referred to the Moscow Arbitration Court. The non-use decisions rendered by the Arbitration Court in 2012 and in early 2013 on more than 300 cases make it possible to form a general opinion on its practice and to identify its major approaches to these disputes. We expect that the newly created IP Court will examine non-use cancellation cases based on the practice developed by the Arbitration Court.
The transfer of the venue has a number of benefits for parties, including regarding representation, evidence, examination of documents, cases involving multiple marks and fees. But there are also some downsides including more complicated procedure, and longer times for examination of disputes.
Interested parties
In recent years, the Chamber for Patent Disputes and the courts have developed the criteria applicable to evidence of legitimate interest in trade mark non-use cancellation proceedings (Resolution 14503/10 of 1st March 2011 concerning the trade mark Ñòðèæàìåíò/Strigament, Resolution KG-À40/10536-09 of 19th November 2009 concerning the trademark Gold Star and Order VAS-2333/10 dated 10th March 2010 concerning the trade mark Gold Star).
Now, the Arbitration Court views parties that cannot be the holder of rights to a trade mark (individuals not registered as individual entrepreneurs) as parties that may have a legitimate interest. Such parties can include, for example, individuals who own domain names and who wish to protect their rights to such domain names in case of a conflict with a trade mark.
Evidence of use
The burden of proof of trademark use lies with the trade mark owner. Trade mark use is viewed as use of the trade mark by its owner or a party so authorised by virtue of a licence agreement or sub-licence agreement that should be registered at the Russian PTO, or by another party using the trade mark under control of the owner.
Very careful attention must be paid to preparing documents confirming trade mark use as the court of appeal will only accept additional evidence if the party submitting the evidence shows that it could not be provided to the court of first instance for reasons beyond the party's control, and only if the court accepts the reasons as valid.
It must also be taken into account that in Russia it is not possible to combine trademark non-use cancellation action with opposition/invalidation or enforcement action based on the same trade mark. A non-use cancellation action may, under certain conditions, be made as a counter-action as part of a case relating to infringement. However, the non-use cancellation action will be examined in the court examining the initial infringement claim rather than the Moscow Arbitration Court.
Read the full article Cancellation of trademark due to non-use in the Russian Federation on the Team page in the MARQUES website.