The Court for Intellectual Property Rights (IPR Court) has resolved a case concerning the infringement of exclusive rights to trade marks on a website. The defendants were, respectively, the entrepreneur administering the domain name and the hosting provider of the disputed website. The lawsuit was satisfied, and the compensation was recovered jointly. Sergey Zuykov explains more.
The plaintiff owns two trade marks (pictured). It sued the entrepreneur and a hosting provider seeking compensation for infringement of the trade marks.
The plaintiff had discovered that the ivenue.ru website sold goods with the two trade marks.
Before the trial, the plaintiff sent the hosting provider of the disputed website, who was an information intermediary, a notice of violation of exclusive rights to trade marks on the website and a demand to take necessary and sufficient measures to stop the violations. It sought the removal of infringing materials from the website or restriction of access to it, but no such measures were taken.
The lawsuit demanding 300,000 Rubles in compensation was sustained by the Decision of the Arbitration Court of the Moscow Region of 23 June 2020, Case No А40-60253/20-27-435, and the Resolution of the Ninth Arbitration Court of Appeal of 29 September 2020 No 09АП-33986/2020, 09АП-33987/2020, Case No А40-60253/2020, Decision of the IPR Court of 1 February 2021 No С01-1488/2020, Case No А40-60253/2020
The cassation appeal was filed by the hosting provider, which did not dispute its status as an information mediator, but indicated that it had taken sufficient measures to eliminate the violation. However, the courts found that the measures taken did not comply with Article 1253.1 of the Civil Code of the Russian Federation. They took into account the fact that the provider failed to provide the claimant with documents received from the owner of the disputed site to confirm the legality of the use of the marks, effectively preventing the possibility of pre-trial dispute resolution.
The courts have indicated that providers have the following obligations:
1) Communicate the claim to the owner of the website;
2) Inform the claimant about the result of the consideration of its claim, namely about its communication to the owner of the website and the response received;
3) Hand over to the claimant the documents received from the owner of the website;
4) Wait for the plaintiff’s response to the transferred documents and, considering its position, decide on further action, including the blocking of the website.
In accordance with Article 1253.1 of the Civil Code, the following categories of persons are recognized as information mediators:
- Persons and corporate entities who transmit material via the internet;
- Persons providing the opportunity to place the material or information necessary to obtain the material or information hereof using an information and telecommunications network; and
- Persons providing the possibility of access to the material in this network.
According to paragraph 77 of the Resolution of the Plenum of the Supreme Court of the Russian Federation of 23 April 2019 No 10, the actions of the provider to remove or block the disputed content or access of the infringer to the website when receiving notice from the right holder of the fact of violation of exclusive rights shall be evaluated. In the absence of actions on the part of the provider within a reasonable period of time to suppress such violations, the court may hold it liable.
Sergey Zuykov is a lawyer with Zuykov and Partners in Russia and a a member of the MARQUES Dispute Resolution Team