Procedural aspects of the dispute before the courts on the import without the consent of the copyright owner of the original goods independent importers
(April 2015)
Kurochkin Konstantin, The head of the Law Bar Customs & Corporate Lawyers (Moscow), lawyer
The need to prosecute importers for imports of original goods without the consent of rights holders is quite controversial. The answer to this question is to leave the resolution of the legislator, and this article will look at some features of resolving such disputes in arbitration courts on the example of some of the cases that were before the Court for intellectual property rights in the first months of 2015.
1. Recovery of compensation by the court in favor of the owner, a declaration under sub-paragraph 1 of paragraph 4 of Article 1515 of the Civil Code.
Court for intellectual property rights in its Resolution of 24 March 2015 on the case number A40-77794 / 2014 noted that paragraph 1 of article 1515 of the Civil Code of the Russian Federation (hereinafter - the Civil Code, the Code) defines as a counterfeit product, which illegally posted trademark rights holder. In resolving the question of the possibility of recovery of compensation the court should determine whether the trade mark is placed on the defendant imported goods legally or illegally, and in view of these circumstances, has to make a decision.
In its Resolution of 23 March 2015 on the case number A40-2288 / 2014 Court of intellectual property rights has also pointed out that the claim for compensation under Article 1515 of the Civil Code, may be made in lieu of the requirements for the recovery of damages as provided in subparagraph 3 of paragraph 1 of Article 1252 Civil Code. This franchisor is exempt from the obligation of proving the amount of damages, but is obliged to justify their presence. Without the establishment of the circumstances it is impossible to resolve the question of the recovery of compensation under paragraph 4 of Article 1515 of the Civil Code.
2. Take measures to ensure alleged copyright claims.
In its Resolution of 10 April 2015 on the case number A40-92170 / 2014 Court of Human Rights declared illegal intellectual failures of the lower courts in meeting the defendant declared the petition to oblige the plaintiff to provide counter-security by making the deposit account of the arbitral tribunal funds for indemnity due to the defendant the adoption of interim measures.
In accordance with Part 1 and 2 of Article 90 of the Arbitration Procedure Code of the Russian Federation (hereinafter - the APC RF) court of arbitration at the request of the person involved in the case and in the cases provided of the APC, a person may take urgent interim measures to ensure action or property interests of the applicant (interim measures). Provisional measures are permitted at any stage of the arbitration proceedings, if the failure of those measures may hinder or prevent the execution of the act, including if the execution of the act is expected outside the Russian Federation, as well as to prevent significant harm to the applicant.
A list of security measures specified in paragraph 1 of Article 91 of the APC, including as one of such measures is called the seizure of money or other property belonging to the defendant, and located him or others. This list is not exhaustive, this procedural rules stated that the arbitral tribunal may be taken other security measures. Under Part 1 of Article 94 of the APC arbitral tribunal allowing maintenance of the claim, at the request of the defendant may require filed an application for interim relief the person or invite him on their own initiative to provide security for compensation of possible losses for the defendant (counterclaim software) by making the deposit account of the court Cash in the amount proposed by the court, or of a bank guarantee, surety or other financial security of the same amount.
Size counter security can be set within the property claims of the plaintiff stated in his statement, as well as the amount of interest from these requirements. Size counter security may not be less than half the size of the property claims. In accordance with the guidance in paragraph 10 of Resolution of the Plenum of the Supreme Arbitration Court of the Russian Federation of 12.10.2006 № 55 "On the use of arbitration courts of interim measures' in assessing the validity of the arguments for interim measures to the arbitral tribunal should be borne in mind, in particular, the provision of balance the interests of stakeholders. The balance of interests of the claimant and the defendant is achieved through the application of such measures by the court, which will allow, on the one hand, to enforce the judgment in meeting the stated requirements, on the other hand, the defendant receive compensation for damages caused by the plaintiff claimed and the court imposed interim measures in the event of failure to satisfy the stated requirements. Thus the right of the defendant to recover damages caused by the interim measures is enshrined in Article 98 of the APC.
Court of intellectual property rights also pointed out that the compensation of such damages may be difficult, including, if security measures are taken at the request of a foreign legal entity, since the execution of the Act for damages will be required to perform outside of the Russian Federation with the use of procedures provided by the State, the jurisdiction of which the person belongs.
The above examples of judicial practice indicate the need for a more serious and balanced approach to the issues of proof stated claims, even so, at first glance, obvious disputes between copyright holders and importers.