Maxim Ali told “Advokatskaya Gazeta” about legal and judicial changes in IP&IT in 2021

“Advokatskaya Gazeta” prepared a publication in which experts talked about the most important changes in intellectual property legislation in 2021, as well as the latest trends in judicial practice.

One of the innovations is the transition to the electronic certificates for intellectual property objects. Amendments to Part IV of the Civil Code were introduced by the Federal Law No. 217-FZ of July 20, 2020 and entered into force on January 17, 2021. According to Maxim Ali, Head of Intellectual Property and Information Technologies practice at Maxima Legal, “this is a reasonable development of the widespread practice of abandoning paper documents (this was the case with certificates of title to real estate and registration of legal entities). In any case, all data are checked against public registers. In addition, conservative rights holders can still obtain a paper certificate for 2,000 roubles. Is it really needed? In my opinion, there is no particular need for it. But it is possible that at first, governmental bodies and courts may behave cautiously and be suspicious of electronic certificates”.

Among the trends in judicial practice of protection of intellectual property rights, the expert noted the change in the approach of the courts to the calculation of compensation for the violation of exclusive rights and the allocation of court costs. “The problem raised by the Constitutional Court [Decision No. 46-P of October 28, 2021] is the application of the rule on proportional distribution of court expenses in the situation when the court decreases the amount of the awarded compensation. As a result, it may turn out that the costs recovered by the right holder will be higher than the amount of compensation received by him,” explained Maxim Ali. However, in his view, the Constitutional Court of the Russian Federation has considered this problem narrowly, speaking only in cases where the courts are awarding compensation below the lower limit. “The Constitutional Court decided that in such situations the right holder should not compensate the expenses of the infringer, if he initially claimed the minimum amount of compensation,” the expert stressed.

Maxim Ali noted that this ruling of the Constitutional Court echoes a recent ruling of the Supreme Court, which stated that the amount of costs recoverable from an infringer cannot be a multiple of the compensation received by the rightsholder. The expert also recommended taking into account the problem of reduced compensation and reallocation of court costs when applying to the court for the protection of intellectual property rights.

To read the full article (in Russian) please visit Advokatskaya Gazeta website >>>