The Supreme Court of the Russian Federation has prepared extensive clarifications on intellectual property

On Thursday, April 11, the draft Resolution of the Plenum of the Supreme Court of the Russian Federation “On the Application of Part Four of the Civil Code of the Russian Federation” (hereinafter – the Resolution) was published.

This document contains explanations for the courts on intellectual property and is intended to replace a similar Resolution № 5/29[1], to which the courts still refer in thousands of different cases.

In addition, the new Resolution replaces a number of other clarifications, and also attempts to summarize the most significant positions developed by the courts over the past 10 years. Thus, the ambitious goal is to create a key and most ambitious document with explanations on intellectual property.

As a result, the draft Resolution already occupies 94 pages of the text and contains 185 paragraphs. For comparison, Resolution No. 5/29 contains only 65 points.

Taking into account that many of the clarifications that are still in force today will become invalid, the developed document contains many positions that are quite obvious from the law or are already known to the court practice.

For example, the following positions from the Resolution are not fundamentally new:

Audio or video recording as admissible evidence does not require consent to be obtained;
the remuneration under the license agreement cannot be refunded only on the basis of the licensee’s failure to use the intellectual property object provided to it;
It is not a violation of the use of words registered as a trademark in their common (commonly used) meaning, rather than for the identification of goods.
At the same time, the Resolution contains a number of clarifications, which are either new or not yet frequently used by courts in practice:

when making an intellectual property right[2] as a contribution to the authorized capital of a business company, a separate contract with such a company is not required if it is indicated by a corporate decision, and if it contains all the essential terms of the contract[3];
the area of use of the patented object cannot be expanded within the framework of the right of prior use;
you cannot be held liable for illegal use of an intellectual property object if such a person did not know and should not have known about the violation and used it on behalf of another person.
Thus, the new instrument may be considered as a consequence of the evolution of the explanations of the higher courts on the protection and enforcement of intellectual property.

Regardless of the final version of the Resolution, lawyers in the field of intellectual property will have to pay close attention to it.

1] Resolution of the Plenum of the Supreme Court of the Russian Federation No. 5, Plenum of the Supreme Arbitration Court of the Russian Federation No. 29 of 26.03.2009 “On some issues that have arisen in connection with the implementation of Part Four of the Civil Code of the Russian Federation”.

2] Including the exclusive right, rights under the license agreement, the right to a patent.

3] Paragraph 11 of the currently applicable Resolution 5/29 contains the opposite position on the need to conclude a separate agreement.