Draft Federal Law No. 638828-8 provides for amendments to Article 1515 of Part Four of the Civil Code of the Russian Federation in order to implement the Resolution of the Constitutional Court of the Russian Federation No. 57-P of 14.12.2023 on the case on checking the constitutionality of paragraph 3 of Article 1252 and subparagraph 2 of paragraph 4 of Article 1515 of the Civil Code of the Russian Federation in connection with the request of the Intellectual Property Rights Court.

Under the Bill, in certain cases the court will be entitled to reduce the amount of compensation for the infringement of an exclusive right to a trademark if previously, at the suit of another right holder, compensation for the infringement of an exclusive right to a trademark was recovered from the infringer at twice the value of the same goods.

The court will be able to reduce the compensation on the basis of the defendant’s application.

In determining the amount of compensation to be recovered, the court must take into account all circumstances relevant to the case, including the nature of the infringement and its consequences for the right holder, the existence and degree of affiliation of the right holders, compliance of the amount of compensation with the requirements of fairness and proportionality, including taking into account the amount of compensation previously recovered at the suit of another right holder.

The court will be entitled to refuse to recover compensation if it establishes the existence of the above circumstances, as well as the absence of reasonable economic grounds for the right holder to grant other persons consent to the registration of confusingly similar trademarks, except for the purposes of using such right ownership solely as a means of enriching oneself on such claims.

It is planned that the norms of the bill will ensure compliance with a unified approach to determining the amount of compensation for violation of the exclusive right to a trademark, calculated on the basis of twice the value of goods, and will also contribute to the balance of rights and legitimate interests.

Documents:

  • Resolution of the Constitutional Court of the Russian Federation of 14.12.2023 N 57-P “On the case of verification of the constitutionality of paragraph 3 of Article 1252 and subparagraph 2 of paragraph 4 of Article 1515 of the Civil Code of the Russian Federation in connection with the request of the Court of Intellectual Rights”
  • Bill No. 638828-8