Maxima Legal has published a Legal Alert on the far-reaching updated guidance from the Supreme Court on intellectual property

Head of the IP/IT Practice at Maxima Legal, Maxim Ali has written an overview of the Supreme Court’s draft guidance released on 11 April.

The document contains an explanation for courts on intellectual property and amends earlier guidance which the courts have used and referred to in thousands of cases. Furthermore, the new guidance amends a number of explanations and is intended to consolidate the court’s position on a number of landmark cases over the past 10 years. As such the document is an ambitious attempt to create a bring together guidance and explanations on intellectual property. The draft guidance already contains 94 pages and 185 paragraphs. By comparison, the previous guidance contained only 65 paragraphs.

Considering that a number of explanations used currently will lose their force, the document contains a number of positions which clearly follow the law and recent case decisions.

For example, the following established points will be included in the guidance:

• Recognition of an audio recording or video recording as admissible evidence does not require consent;
• Remuneration under a license agreement cannot be returned only on the basis of the licensee’s non-use of the intellectual property object provided to him;
• It is not a violation to use words registered as a trademark in their common meaning, and not for identifying goods.

At the same time, the guidance contains a number of explanations, which are either new or so far rarely used by the courts in practice:

• When making intellectual rights[2] as a contribution to the authorised capital of a company, entering into a separate contract with such a company is not required if this is indicated by a resolution, and if it contains all the essential terms of the contract[3];
• Within the framework of the right of prior use, the territory for the use of the patented object cannot be extended;
• It is impossible to incur liability for the illegal use of an object of intellectual property if such a person did not know and should not have known about the violation and carried out the use on the instructions or instructions of another person.

Accordingly the new guidance can be considered to be an evolution of the explanations of higher courts on the protection of intellectual property. Lawyers in the field of intellectual property will have to pay close attention to the final version.

[1] Guidance 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 dated 26 March 2009 ‘On some issues arising in connection with the introduction of part four of the Civil Code of the Russian Federation’

[2] Including exclusive rights, rights under a license agreement, rights to obtain a patent.

[3] Paragraph 11 of the currently applicable Regulation 5/29 contains a requirement to conclude a separate contract.