Plenum of Supreme Court on intellectual property

Aug, 01 2019

On April 23, 2019 Plenum of Supreme Court adopted Resolution concerning intellectual property. The Resolution replaces previous, 10-years old Resolution. New Resolution adopts to modern digital world and reflects numerous progressive ideas of Russian legislation.

1.Supreme Court criticizes judges who prescribe parties to notarize internet screenshots in all circumstances. Now, claimant can legalize screenshots on his own and it will be assessed on an equal basis with other proofs. Moreover, judges can check the information in the internet during court hearings.

Due to this clarification, it will be easier to proof violation of intellectual property rights, since there is no need to observe compulsory and expensive procedure.

  1. Supreme Court for the first time explained which court is appropriate when the claim relates to “cyber-squatting”. Cyber-squatters register domain names that contain trademarks in order to resell this domain name to the trademark owner. Supreme Court clarified cyber-squatting victims should refer their claim to commercial courts, even though cyber-squatter may be an individual.

  2. The resolution also contains commentaries, crucial for know-how owners. Supreme Court explained: trade secret status is not obligatory for the confidential information to be recognized as know-how.

Imposition of a trade secret status is very formalized and complex procedure: an employer has to issue a “trade secret order,” to conclude non-disclosure contracts with employees and business partners, to draw a “trade secret mark” on physical objects containing confidential information Supreme court explained the observance of this procedure is desirable but not obligatory. Information can be recognized as a know-how if know-how holder proves that he put all reasonable efforts prevent the confidential information disclosure.

  1. Supreme Court explained how to claim compensation for the violation of exclusive rights. In accordance with Russian Civil Code, right holder can claim compensation amounting to 5 million roubles. However, Civil Code does not oblige neither claimant nor court to justify the claimed amount of compensation. Usually the compensation sum was inadequate in comparison to suffered loss. Supreme Court explained the sum of compensation must be justified in judicial decision as well as in claim.

  2. Supreme Court paid particular attention to employees’ inventions and works, i.e. inventions and works created by an employee within his employment duties and which exclusive rights belong to an employer.

Supreme court clarified what sources of evidence can proof that the invention or work were created in line of employment duties. Apart from job instruction, employer can substantiate this fact by other indirect evidence (for example, the place of object creation, subsequent employer’s and employee’s conduct, sources and means by which invention or work was created etc.). Burden of proof in this case is placed on the employer.

This explanation is of great importance in the light of recent case law. The number of lawsuits against employers increased considerably, especially in the IT-area. For example, in 2018 Anton Mamichev, employee of Veeam Software, was awarded record-high 23 million rubles of damages for program created during working hours.

Thus, judicial practice outruns the legislative development considerably. We presume that issues that the Supreme Court touched upon will be decided by the Parliament soon.

Valentina Khlavich
Valentina Khlavich
Managing Partner