Russia: New pretrial rules for IP cases; jurisdiction in domain disputes
New pretrial requirement for IP cases
Starting on 12 July 2017 a new pretrial requirement entered into force in Russia.
Sending cease-and-desist letters before filing a lawsuit in commercial courts is no longer required for various IP claims, including on ceasing the infringement, confiscation of the counterfeits and recognition of a right.
However, it is still required for claims for recovery of damages or statutory compensation: a person whose exclusive right has been infringed must send a written demand to the infringer before commencing court proceedings. If no response has been received to the demand or the infringer does not agree to comply with the demand within thirty days after it is dispatched (actual service is not required), the rights holder is entitled to file an infringement suit.
A similar requirement applies where an interested party believes that a trademark has not been used for three years after its registration and wishes to bring a cancellation action. The interested party must first send the trademark owner a letter suggesting either a waiver of the trademark or its assignment to the interested party. If, within two months after the letter is sent, the trademark owner neither submits an application for waiver nor concludes an agreement with the interested party regarding the assignment of the exclusive right to the trademark, the interested party may file the cancellation action within thirty days after the end of the two-month period.
Russian commercial (arbitrazh) court jurisdiction over international domain name disputes
The Supreme Court of the Russian Federation has clarified the jurisdiction of Russian commercial courts over international domain name disputes.
It has held that Russian commercial courts have jurisdiction over domain name disputes involving foreign citizens or organisations if the claims relate to:
- Russian national top-level domains “.RU”, “.РФ”;
- Russian second-level domains aimed at a Russian audience or featuring websites with Cyrillic characters;
- any other domains if the domain is registered in Russia, i.e. the registrar is a Russian entity.
Russian commercial courts would also have jurisdiction over disputes which have a close connection to Russia, for instance the website is aimed primarily at a Russian audience or a party engages in commercial activities aimed at people located in Russia.