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Annual reports 2001 - Section 6

 



Activities of the Board of Appeals and the Higher Patent Chamber. Judiciary Practice

6.1. The Board of Appeals

In 2001 the Board of Appeals of the Russian Agency for Patents and Trademarks continued to carry out its activities aimed at securing the protectable rights of the applicants, patentees and legitimate interests of other natural persons and legal entities, when considering the appeals against the Examination decisions on applications for industrial property rights and objections against the grant of titles of protection or registration of industrial property rights.

It should be noted that the proportion of the appeals accepted in 2001 by the Board of Appeals, among the types of industrial property rights, was changed as compared to previous years.

shows this change.

Table shows that in 2001, despite the trend existed in previous years, the increase in number of objections related to inventions, noted in the year 2000, was continued and trend to increasing in number of objections related to utility models was not changed, at the same time, number of objections related to trademarks continues its insignificant decreasing.

The proportion of the appeals accepted in 2001 according to the types of industrial property rights is presented in graphic form in a Diagram.

In 2001, by the results of examination of the appeals, the Board of Appeals passed 597 decisions; 62 appeals were withdrawn at the stage of examiniation thereof.

The change in the number of decisions passed by the Board of Appeals is shown in Table 6.1.2 and accompanying Diagram, where the number of satisfied (fully or in part) appeals versus the number of those dismissed is also shown.

 

Table 6.1.3

 

 

 

Table 6.1.4 and Diagram show the character of decisions passed in respect of different types of appeals.

 

6.2. The Higher Patent Chamber

In line with increase in filing applications for industrial property rights, the number of appeals lodged to the Higher Patent Chamber (HPC) is also increasing. The main function of the HPC is to take the final administrative decisions on providing or termination of the legal protection of industrial property rights, as well as changing the scope of protection on the basis of complains, appeals and petitions filed by the rightholder or third parties, including protests against the decisions passed by the Body of Appeals.

Table 6.2.1 shows cumulative data on activity of the Higher Patent Chamber since the date of establishment.

In 2001 the number of decisions passed by the Higher Patent Chamber has increased in 78 decisions versus the year 2000 and amounted to 405.

 

The majority of appeals lodged to the Higher Patent Chamber was related to trademarks. Table 6.2.2 shows that 361 decisions were passed in relation to trademarks and 39 decisions — in relation to inventions. The rest of cases was related to disputes on protectability of industrial designs, utility models and appellations of origin.

 

The analysis of trademark appeals lodged to the Higher Patent Chamber (see Table 6.2.3) shows that the majority of cases relates to the earlier termination of validity of trademark registrations for non-use thereof. In 2001 the number of appeals with respect to the earlier termination of validity of trademark registration for non-use is amounted to 522 or 75 % from a total number of appeals (see 6.2.1). It means that 3 cases from 4 relate to non-use of trademarks. In 2001 the Higher Patent Chamber passed 248 such decisions (61,2% from a total number of appeals).

 

Table 6.2.4 shows than 150 positive decisions were passed in 2001 on appeals related to trademarks’ non-use, i.e. more than 50% of appeals on non-use were satisfied. The number of negative decisions (41 decisions) can be compared with number of decisions in respect of the earlier termination of legal protection in relation to part of the list of goods and services (57 decisions). In the year under review, 98 such decisions were passed, i.e. decisions on full or partial refusal were passed in 30% of cases. The above data testifies that there is significant amount of non-used trademarks.

 

27 decisions (9,9%) relate to recognition of trademark as well-known mark in the Russian Federation. In the year under review, 7 such decisions were passed.

150 appeals (21,6% of a total number) were lodged in 2001 against decisions of the Board of Appeals (see Table 6.2.1). 104 appeals relate to trademarks (Table 6.2.2). The number of cases related to assignment of industrial property rights can be compared with number of cases related to opposing title of protection (61 and 89 cases, respectively). At the same time, the number of cases related to opposing trademark registrations (71) has increased by five folds as compared the number of cases related to oppositions to grant of patents (15).

130 decisions (32,1% of a total number) were passed on appeals against decisions of the Board of Appeals. The number of decisions related to opposition to trademark registrations (54 decisions) increased approximately in twice as compared the number of decisions with regard to full or partial refusal to provide the legal protection to signs claimed (32 decisions). And vice versa, as to inventions, the number of disputes with regard to refusal to grant a patent (26 decisions) increased in twice as compared the number of disputes related to title of protection (13 decisions). 40 decisions of the Rospatent’ Board of Appeals (30,8%) were annulled or revised (see Table 6.2.5).

 

6.3. Judiciary Practice

In the year under review, the number of litigation proceedings with the participation of the Russian Agency for Patents and Trademarks (Rospatent) and its subordinated organizations has significantly increased.

In 2001, the number of such suits is amounted to 100 (increased by 30%). In the year 2000 Rospatent was involved in 63 litigations.

Table 6.3.1 shows that in 2001 the representatives of the Patent Office participated in 132 sessions of various Courts, such as the Supreme Court of the Russian Federation (3), Courts of Arbitration (74) and Courts of Common Jurisdiction(55). In more that a half of the cases ruled in 2001, Rospatent was named to be a respondent.

In 2001, the Supreme Court of the Russian Federation refused to satisfy the statement of action lodged by ZAO «Novaia Zaria», related to demand for invalidation of Article 6.4 of the Rules on drafting, filing and examination of application for registration of trademark and service mark. The lawfulness of this decision was confirmed by ruling of the Cassation Body of the Supreme Court of the Russian Federation.

 

In the year under review the Supreme Court of the Russian Federation ruled the cassation appeal against the decision of the Court of Moscow-city ,which refused in 2001 to satisfy the statement of action lodged by company «UDW Nort of America» in 1993 and cross-actions of TOO «P.A.Smirnov and Descendants in Moscow». The issue of the said actions was the decisions , passed by the Board of Appeals of Rospatent, in relation to trademarks of TOO «P.A.Smirnov and Descendants in Moscow» and Examination decisions passed with regard to signs «SMIRNOFF» and «PIERRE SMIRNOFF» and recognition of above signs as well-known marks in the territory of the Russian Federation. Under the ruling of the Civil Body of the Supreme Court of the Russian Federation the decision of the Court of Moscow-city was not changed and cassation appeals were not satisfied.

The majority of the cases (35) relates to the demands for invalidation of the Executive Acts of the Governmental Authority. The number of such cases is amounted to 12 (related to inventions), 19 (related to trademarks) and 4 (related to appellations of origin). The demand for invalidation of the Executive Act of the Governmental Authority is one of the civil remedies provided for by the Civil Code of the Russian Federation for protection of interests of both legal entities and natural persons.

The statements of action which relate to the appeals against decisions of the Higher Patent Chamber of Rospatent shall be selected from a total number of demands for invalidation of the Executive Acts of the Governmental Authority. 405 decisions were passed and communicated in 2001 to persons lodged complaints or petitions with the Higher Patent Chamber of Rospatent. 23 statements for invalidation of such decisions were lodged in 2001 and after considering decisions were passed, including 2 decisions related to inventions, 19 - related to trademarks and 2 - related to appellation of origin. The above decisions were passed by both the Courts of Arbitration and Courts of Common Jurisdiction with participation of Rospatent as respondent.

Besides, the Courts have considered 3 appeals against decisions of the Body of Appeals of Rospatent.

In the year under review 5 statements of action were lodged (4 — in previous year) the proceedings of which were terminated because all the cases were out of Court jurisdiction.

The number of statements of action, which were dismissed by Courts for the claimant’s non-observance of a pre-trial procedure of disputes’ settlement, has decreased. The Court of Arbitration dismissed 2 statements of action. The legality of such decisions was confirmed by both Appeal and Cassation Instances.

The cases related to invalidation of the license contracts and industrial property rights’ assignment contracts, which Rospatent registers in virtue of provisions of Article 10 (RU Patent Law) and Article 27 (RU Law «On Trademarks, Service Marks and Appellation of Origin»). The above cases were ruled by the Court of Arbitration as well as by the Courts of Common Jurisdiction.

In 2001, the Patent Office received 14 such statements of action, including 2 cases concerning patents for invention and 12 cases concerning trademarks. In result of consideration of the above statements, 10 decisions on dismissal of statements of action and 2 decisions with respect to invalidation of trademark assignment contract were passed. In all the cases the Rospatent actions with respect to the contract registrations were recognized as legal ones. It should be underlined that Rospatent carried out the control of contacts submitted for registration as far as contacts’ compliance with prescribed requirements is concerned. The grounds on which the court passed a decision on the contract invalidation didn’t relate to the registration procedure and were not covered by the conditions which, according to Normative Acts, should be examined by Rospatent. It shows that the scope of legal power of Rospatent in accordance with legislation does not correspond to its responsibility under circumstances in which Rospatent did not know and are beyond its competence.

At present the Appeal Instance of the Court of Arbitration considers an appeal against the decision on invalidation of license contract related to use of trademark.

In 2001 one statement of action with respect to license contract related to use of patent was not considered by the Court of Common Jurisdiction in result of an agreement on lawsuit concluded by the disputing parties and approved by the Court. Rospatent was involved in this case as third party.

The number of suits with respect to rightful indication of the owner of protective document has significantly decreased (6) including 2 suits ruled with the participation of the FIPS and 4 suits ruled with the participation of Rospatent.

On the background of increasing number of suits, considered by the Courts of Arbitration and Courts of Common Jurisdiction (with respect to determination of authorship, patent owner, infringement of industrial property rights), the number of these cases, in which Rospatent and its subordinate organizations appeared for as third party, was not changed, as compared to the previous years. In 2000, there were 12 such cases (Rospatent —10 and FIPS — 2).

The total number of the Courts Actions passed in 2001 is amounted to 86. Only 6 decisions with respect to satisfaction of claims were passed by the Courts, including two suits in which Rospatent appeared for as third party and the said courts actions have no legal consequences for Rospatent. In the year under review, 4 decisions satisfying statements of action were passed by the Courts with respect to suits in which Rospatent appeared for as respondent. 2 decisions were revoked by the Courts of Appellation Instance.

One of the above decisions relates to statement of action on recognition of the Higher Patent Chamber’ decision as void. The ground of this decision was a recognition by Rospatent of this statement of action because of the trademark holder was not informed in due order on the date of the suit proceedings.

Thus, the Court rulings related to suits with participation of Rospatent and subordinated organizations allow to make a conclusion that the majority of the Patent Office’s decisions was confirmed by the Court.

In the year under review there was considerable increase in the number of cases in which specialists of Rospatent appeared for as experts to submit opinions as to use of industrial property rights. 61 opinions were worked out in 2001 (15 opinions in the year 2000).



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