For the last 20 years, at least, there were no legal conditions
that had to be met prior to filing a trademark or patent
infringement lawsuit in Russia. This will change this coming June,
after which prospective plaintiffs will need to send a demand
letter to the suspected infringer before an action is
New Federal Law no 47-FZ "On Introduction of Amendments to
the Commercial Litigation Code", dated 2 March 2016,
stipulates that a civil law dispute can be filed with the
commercial court only after the parties have attempted pre-trial
resolution of the issues, and in any case, no earlier than 30
calendar days from the date when a demand letter was sent.
This new requirement is incorporated into par. 5 of Article 4 of
the Commercial Litigation Code. The Code provides some exceptions
to the rule. For example, preliminary notification is not required
for cases that relate to:
facts of legal significance;
awards of compensation for violation of right to due process or
execution of legal act in reasonable term;
protection of rights and legal interests of groups of
trademark non-use cancellation actions; and
challenges of arbitration awards.
Generally speaking, the new Russian law does not regulate the
content of the pre-trial demand letter. Yet, it is very important
to have the letter drafted properly to demonstrate to the court
that the pre-trial procedure was observed by the plaintiff. Failure
to do so would give the court discretion to dismiss the action or
deny part of the claim.
In contract cases, the parties to the contract should spell out
in the demand letter the mechanism for pre-trial resolution, the
breach(es) in question, any possible terms of settlement and the
deadline for doing so.
In intellectual property (IP) infringement cases, we recommend
including at least the following in any demand letter:
the names and details of the parties;
a clear title of the demand letter in Russian;
the IP right in question and a copy if it is a registered
a brief summary of the acts that constitute infringement and
for patents, identify the claims infringed;
the desired relief including monetary sums, injunctions, etc;
the deadline for resolution if the claimant wants it to be
different from the statutory term of 30 days.
The idea behind the pre-trial resolution procedure is to ease
the burden on the courts. But it may not always work to the benefit
of a plaintiff. For example, in a domain cyber-squatting case this
procedure will likely do more harm than good. After receiving a
demand letter, a cyber-squatter can then transfer the impugned
domain registration to a foreign jurisdiction or simply to a new
owner in a remote location in Russia, thus hampering the efficient
retrieval of the domain. One option to circumvent this maneuver
would be to file for a preliminary injunction simultaneously with
sending the demand letter. However, it is yet to be seen whether a
court would grant the motion before the deadline for response set
forth in the demand letter.
In patent cases, the patentee will have to dispatch a demand
letter to an alleged infringer giving that person 30 days to
respond. In that waiting period the recipient of the letter will be
in a position to file a patent revocation action in the patent
office without giving advance notice. However, such a pre-emptive
step taken by an infringer will not deprive the patentee from its
right to move ahead with the infringement action after the initial
30 day waiting period.
While this change in Russian law is intended to relieve the
workload of the courts, time will tell whether or not this change
could also unintentionally relieve a plaintiff of certain IP
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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