The annual St. Petersburg International Legal Forum (LF) was
held on May 27-30 this year and was attended by Prime Minister
Medvedev, several high-level government officials, representatives
from several countries, law professors and practitioners. The
mission of this state-sanctioned legal forum is to discuss
“today’s most pressing legal issues, which encompass
social and economic challenges worldwide.”
At a session focused on unfair use of trademarks, the chief
judge of the Russian Intellectual Property Court, Ludmilla
Novoselova, shared the Court’s views. In a country where
abuse of trademark rights is quite commonplace, the chief judge
acknowledged that this is a most pertinent issue for brand owners.
She said that, for the Court, any practices that are seen to be in
bad faith are of interest to the Court in its evaluation of the
rights of legitimate domestic and foreign entrepreneurs.
Judge Novoselova recounted that, in the two years since the
Court was created, they have heard dozens of cases where bad faith
or “parasitic behaviour” were elements associated with
either the improper registration or assertion of a trademark in
Russia. The IP Court hears both appeals from trademark cancellation
cases decided at the first instance by the Chamber for Patent
Disputes, as well as appeals from decisions made by the Federal
Anti-monopoly Service (FAS). It also hears cassation appeals from
trademark infringement cases decided by the Commercial Court.
The honorable chief judge emphasized that in cancellation and
infringement cases, as well as in FAS unfair competition cases, the
IP Court is most interested to know if there are elements of bad
faith or parasitic behaviour associated with the case.
Acts amounting to unfair competition fall within the
jurisdiction of both the FAS and the IP Court. The Court is
empowered to consider in this regard both Art.10bis of the Paris
Convention and Art.10 of the Civil Code of the Russian
Federation. Under Art 10bis, to which Russia is a signatory,
Russia is to forbid all acts of such a nature as to create
confusion by any means with the establishment, the goods, or the
industrial or commercial activities of a competitor. Under Art. 10
of the Civil Code, the IP Court has jurisdiction to deny the use of
a civil right, viz. an improperly registered trademark
registration for the purpose of restricting competition or abusing
a dominant position.
Bad faith, she said, was not typically proven by way of direct
proof of the same. Rather, bad faith is usually established by way
of circumstantial evidence relating, for example, to a prior
business relationship between the two parties (manufacturer and
importer or distributor) or likely prior knowledge of an
established brand in the global marketplace. Evidence of bad faith
must predate the application date of an impugned trademark
It was reassuring to hear that the new IP Court wholeheartedly
embraces giving due regard to conduct which is seemingly in bad
faith in trademark infringement and cancellation cases. The chief
judge also mentioned that there is a need to more clearly delineate
the line of demarcation between behaviours that should be deemed to
be unacceptable and those which should not.
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