The IPC broadly applies the general rules of the Civil Code regarding state registration

On its website, the Intellectual Property Court (IPC) posted the ruling of the IPC Presidium that sheds light on the legal issues arising from correlating Article 8.1 of the Civil Code of the Russian Federation (CC RF) with the provisions of the Section VII of the CC RF titled “The rights to the results of intellectual activity and the means of individualization.” In accordance with Paragraph 7, Article 8.1 of the CC RF, an individual who previously registered a work may introduce an objection to an application for registration. In that case, the individual objecting to an application has three months to bring the matter to court, or the objection is void.

Case No. A40-73681/2013 is the basis for the standpoint of the IPC. The applicant, Turbotect AG, legally contested the refusal of Rospatent to list a disputed trade mark on the State Register of Trade Marks. In rendering its decision, Rospatent referred to the provisions of Administrative Regulation No. 346 of 12 December 2007 of the Ministry of Education and Science of the Russian Federation that specifies the procedure for maintaining the intellectual property register. The IPC upheld the decisions of the first trial and the appeal, noting that the inferior courts, while rendering a correct decision, omitted essential legal aspects regarding the registration of the results of intellectual activity and the means of individualization.

The IPC specified that the administrative regulation, by its nature, constitutes a nonlegislative act, and its provisions must not contradict to the norms of the CC RF. Meanwhile, Article 8.1 of the CC RF makes the same provisions, applicable unless the CC RF stipulates otherwise. The civil legislation on the legal regulation of intellectual property determines the special rules concerning the exclusive rights of registration, distinct from the provisions of Section I of the CC RF. Taking all this into consideration, in addition to the textural analysis of Article 8.1 of the CC RF, the IPC concluded that its provisions are not applicable to the state registration of the results of intellectual activity and the means of individualization. Therefore, in relation to the registered right, there exists no need to introduce notices of dispute in the State Register of Trademarks and Service Marks of the Russian Federation since Article 8.1 of the CC RF does not apply.