Legislative Developments
Total Upgrade: Intellectual Property Law Reform in Russia
Sergey Budylin and Yulia Osipova*
This article originally appeared at 1 Colum. J. E. Eur. L. 1 (2007).
Russia has just undertaken a large-scale intellectual
property (IP) law reform. The reform abolishes most of
the existing IP legislation and instead puts all IP issues
into the new Fourth Part of the Civil Code. The new legislation
was signed into force at the end of 2006, but it was made
effective starting from January 1, 2008. While the new
legislation largely restates, consolidates, and refines
the existing legislation, it also introduces some concepts
not known to Russian law before (such as “unified technology”).
Importantly, the new Russian IP legislation addresses
issues currently being a matter of international concern
(such as phony right-management organizations granting
licenses to pirate websites). This paper discusses the
historical and international context of the new legislation
and provides a detailed outline of the new Fourth Part
of the Civil Code.
I. Introduction.
II. A Brief History.
III. New Legislation.
A. General Provisions.
B. Author’s Rights Law.
C. Neighboring Rights Law.
D. Patent Law.
E. Agricultural Selection Achievement Law.
F. Integrated Circuit Topology Law.
G. Trade Secret Law.
H. “Means of Individualization” Law.
1. Firm Names.
2. Trademarks and Service Marks.
3. Appellations of Origin of Goods.
4. Commercial Designations.
I. Unified Technology.
J. Other
Provisions.
IV. Conclusion.
In the modern world intellectual
property (IP) law is far from a purely domestic matter. Insufficient legal protection for foreign rights
holders in a certain country may be economically painful
for the rights holders, not only because of losses incurred
in that particular country, but also because of losses
incurred in other countries due to the international distribution
of materials and products bearing rights infringements.
In particular, Russia recently became
the talk of the town because of the activity of several
Russian websites selling copyrighted music at fabulously
low prices and, apparently, without any permissions from
the copyright holders.[1] This activity is claimed to be legal under Russian
law because of some statutory non-contractual-licensing
provisions.[2] While the issue of legality is not certain, Russian
law enforcers are reluctant to initiate criminal prosecution
against the website operators.[3] Obviously, such sites, whether or not legal under
domestic standards, are instrumental in facilitating the
infringement of foreign musicians’ rights by downloaders
worldwide.
As a result, Russian
IP law attracted keen interest from the international
community. Insufficient
intellectual property protection was reported to be one
of the biggest obstacles for Russia to join the World
Trade Organization (WTO).[4]
Apparently, partly because
of these international concerns in July 2006, President
Putin finally submitted the long-awaited draft of the
new intellectual property legislation to the State Duma
(the lower chamber of the Russian parliament).[5] This seems
to have worked: in November 2006, the United States agreed
to Russia’s admission into the WTO (most other WTO members gave their consent
earlier).[6]
This article is devoted
to the new Russian IP legislation. It has been approved by the parliament and was
signed into force on December 18, 2006.[7] According to the enabling law, the new legislation
will be effective from January 1, 2008.[8]
The reform is arguably
not as radical as it might seem: although old IP laws will be abolished, most of
their provisions are incorporated into the new legislation. Our general conclusion is that the new Russian
intellectual property legislation does a good job in terminology
unification and filling existing gaps. However, some problems are left open, and a number
of new ones have been created.
As a Russian scholarly
commentator mournfully observed, “Russia has a long and widespread tradition of disregarding intellectual property
rights.”[9] This tradition arguably originated from the general
negation of private property during the seven-decade Soviet
era. In particular, most intellectual products in
the Soviet Union were in the public domain.[10]
After the collapse of
the Soviet Union in 1991, Russia had to develop its IP legislation (as well as many other laws) as
a matter of urgency and from scratch. Within only two years (1992–1993) the bulk of the
now-current intellectual property legislation was adopted,
including laws on patents,[11] trademarks,[12] software,[13] microchip topology,[14] copyright,[15] and agricultural
selection.[16] Unfair competition is to some extent covered
by anti-monopoly legislation, originally dated 1991.[17] During 1994–2001, the first three parts of the
Civil Code were adopted covering some relatively minor
intellectual property issues.[18] The law on trade secrets followed in 2004.[19]
The first three parts
of the Civil Code only slightly touched issues related
to intellectual property. The listing of the types of civil rights objects
included, in particular, “information” and “results of
intellectual activity, including exclusive rights for
them (intellectual property);” without providing any further
explanation of the terms.[20] Moreover, the Civil Code drew a somewhat vague
distinction between a “legal person name” and a “firm
name.”[21] The chapter on the franchising (“commercial concession”)
contract allowed passing to a franchisee not only the
rights for franchisor’s trademarks, but also the “firm
name,” “commercial designation” (something otherwise unknown
to Russian law at that moment), and “protected commercial
information” (also left undefined until the adoption of
the Commercial Secrecy Law).[22] As we will see later, all these objects are included
into the spectrum of intellectual products under the new
Fourth Part of the Civil Code.
It is noteworthy that
Russia is a party to
many major international IP treaties, including a number
of conventions administered by the World Intellectual
Property Organization (WIPO). These include the Paris Convention for the Protection
of Industrial Property (Paris Convention),[23] the Bern
Convention for the Protection of Literary and Artistic
Works (relating to copyright),[24] the Madrid Agreement
Concerning the International Registration of Marks and
relating Madrid Protocol (relating to trademarks),[25] the Patent Cooperation
Treaty,[26]
and several other WIPO conventions.[27] Russia is also a party
to the UN-administered Universal Copyright Convention.[28] In addition, Russia participates
in the Eurasian Patent Convention administered by the
Eurasian Patent Organization (comprising of nine post-Soviet
states).[29] However, since currently Russia is not a WTO
member, it is not a party to the Agreement on Trade-Related
Aspects of Intellectual Property Rights (TRIPS).[30]
Despite the rush, the
Russian legislation adopted in the early 1990s appeared
to be reasonably efficient and corresponding to the existing
international standards (on which, in fact, it was largely
modeled). However,
with the passage of time certain deficiencies became evident. In particular, terminology used in different
laws appeared to be somewhat inconsistent.[31] Numerous amendments to the laws were adopted
to repair defects and to catch up with technology developments,
including the emergence of Internet technology.[32]
As early as in 1994 various
projects of intellectual property law reform began to
appear.[33] Some specialists proposed to include general provisions
on intellectual property into the Civil Code, while retaining
specialized laws on patents, copyright, etc. The most important draft of this sort was developed
in 2002 by a group lead by Professor Alexander Sergeev
of St. Petersburg State University.[34] Some others proposed to incorporate all intellectual
property law provisions into the Civil Code and abolish
all specific IP laws. This
proposition eventually prevailed. A working group lead by Professor Veniamin Yakovlev,[35] a former Chairman
of the Supreme Arbitration Court,
and including many prominent Russian law scholars, prepared
a draft of the Fourth Part of the Civil Code as a comprehensive
and all-inclusive IP legislation.
The draft raised considerable
controversy in the Russian scholarly and practitioner
IP law communities. Critics attacked the draft arguing that such
a radical reform was unnecessary; that it might be harmful
as virtually canceling the existing case law; that total
codification of IP law was unprecedented even in civil-law-system
countries; and that many of the draft provisions were
questionable.[36] Although the drafters of the Fourth Part were
always open for discussion, it will probably be fair to
say that the government failed to organize a meaningful
public debate about the draft. Finally the draft was approved by the government
and submitted to the parliament by President Putin. The parliament, overwhelmingly dominated by a
pro-president party, promptly adopted the draft with relatively
minor amendments.
To summarize, the history
of the modern Russian IP law is short and fervent. The bulk of the current IP legislation was written
from scratch less than fifteen years ago. It was repeatedly amended throughout the period. Now it will be abolished and replaced by the new
legislation, constituting the new Fourth Part of the Civil
Code. Fortunately,
most provisions of the existing legislation are restated
in the new one. However, some controversy over the new legislation
is present in the Russian law community.
The rest of this paper
discusses the provisions of the new Russian IP legislation.[37] The Fourth Part of the Civil Code consists of
eight chapters (69–77) including 327 articles (1225–1551). An “article” of a Russian law can be analogized
to a “section” of a U.S. legislative act. Note that since Russia is a civil law
country, its court decisions are not precedential, at
least theoretically.[38] Accordingly, many provisions paralleling U.S. judicially-made
doctrines are codified in the written law.
Chapter 69 contains general
IP law provisions. According
to the new statute, IP law protects the “results of intellectual
activity” and “means of individualization,” including
the following: (1)
works of science, literature, and art; (2) computer programs;
(3) databases; (4) performances; (5) phonograms; (6) air
and cable broadcasts; (7) inventions; (8) useful models;
(9) industrial designs; (10) agricultural selection achievements;
(11) integrated circuit topologies; (12) trade secrets
(know-how); (13) firm names; (14) trademarks and service
marks; (15) appellations of (geographical) origin of goods;
and (16) commercial designations.[39] The most controversial object of IP rights, the
domain name, present in the original draft, was removed
from the list by the State Duma. As a result, the list is in general correspondence
with the IP right objects covered by various international
treaties to which Russia is a party (and also by treaties
to which it is not a party as yet: e.g., trade secrets are mentioned only by TRIPS). A notable omission from the list is unfair competition. Although the Paris Convention considers the repression
of unfair competition as a protection-of-industrial-property
object (on an equal footing with patents, trademarks,
etc.),[40] the Fourth
Part drafters did not include it into the list of the
“results of intellectual activity” (which seems reasonable). Instead, unfair competition continues to be covered
by separate (anti-monopoly) legislation.[41]
The legislation introduces
a new blanket notion of “intellectual rights,” including
“the exclusive right being a property right” and “personal
non-property rights” as well as some “other rights.”[42] That is, in line with the continental European
tradition, Russia recognizes not only economic, but also moral rights of the author
which are the “result of intellectual activity” (such
as the right to claim authorship); in addition, it covers
certain rights not exactly fitting into this dichotomy
(such as the right of access to own work for copying it).
The author of a “result
of intellectual activity” is always an individual (or
several individuals) engaged in this activity, not a legal
entity.[43] The author can assign her exclusive (economic)
rights, but personal non-property (moral) rights are unassignable.[44] Some types of IP right objects require state
registration for their legal protection,
[45] but some do not
(as discussed in more detail below). A right owner can either assign her exclusive
right in a “result of intellectual activity” or “means
of individualization,” or license its use to another person.[46] In certain cases a court may compel granting
a compulsory license.[47] Note that by introducing the general terminology
in the introductory part of the Fourth Part of the Civil
Code, the legislature unified previously inconsistent
word usage as related to different objects of IP rights.
The law explicitly authorizes
the creation of management organizations for the collective
management of authors’ rights and related (“neighboring”)
rights.[48] As a general rule, a contract with a right owner
is required for a management organization to manage her
rights.[49] However, a state-accredited organization may
manage one’s rights without a right owner’s permission,
unless she explicitly objects.[50] The organization should take measures to contact
the right owner for making a relevant payment.[51] Note that the state-accreditation requirement
as a precondition of non-contractual right-management
is an important legal innovation. Apparently, it is intended to solve the problem
of phony right-management organizations (in particular,
those providing to websites blanket music-distribution
licenses at more than affordable prices).
An accredited right-management
organization is also authorized to collect and distribute
statutory royalties for free reproduction of phonograms
and audiovisual works for personal needs. These royalties are collected not from individuals
but from the manufacturers and importers of the relevant
equipment (VCRs etc.). The details of the scheme are left to be determined
by the government.[52]
The registration of inventions
(i.e., issuing patents), of trademarks, etc. is carried
out by the “federal organ of executive power in intellectual
property” (currently Rospatent); selection achievements
are registered by a separate agency.[53] Arising disputes are generally solved by courts,
but in certain cases the first-instance forum is a specialized
board run by the relevant state agency (Rospatent’s Patent
Dispute Chamber).[54]
Personal non-property
(moral) rights of the author may be protected, in particular,
by the following means: (1) declaration of the right; (2) restoration
of the status quo
ante; (3) injunction; (4) moral harm compensation;
(5) publication of the court decision.[55] Exclusive (economic) rights can be protected
by the following: (1)
declaration of the right; (2) injunction; (3) compensatory
damages; (4) confiscation of the infringing material object;
(5) publication of the court decision.[56] In certain cases a statutory compensation is
available.[57] In certain cases some other measure can be taken,
like the cancellation of a concurring trademark.[58] In the case of multiple or gross infringements
a legal person may be dissolved, and an individual can
be deregistered as an entrepreneur.[59] Note that damages are only compensatory (or sometimes
fixed by a statute). Damages
based on accounting for the infringer’s profits, as well
as double, treble, or punitive damages are not known to
Russia’s law (but see
below for the method of calculating the statutory compensation).
To summarize, the starting
chapter introduces unified terminology and establishes
a legal framework for further chapters.
Chapter 70 covers what
is known as copyright in the U.S. However, the scope of the protection
is not limited to the right of making copies, which is
reflected in the terminology. Author’s rights are intellectual rights in the
works of science, literature, and art. Author’s rights include the following: (1) the exclusive right in the work; (2) the
right of authorship (to be called the author of the work);
(3) the right for the name (to publish the work under
own name, under a pseudonym, or anonymously); (4) the
right of inviolability (to protect the work against distortions);
(5) the right to publish the work.[60]
The legal protection
is provided to works published in Russia or unpublished but existing in a material form in Russia, and to the works
of Russian citizens published outside of Russia or unpublished
but existing in a material form outside of Russia. Other works are protected if covered by an international
treaty of Russia.[61] Notably, no “originality” requirement is present
in the definition of the subject matter.
The author is always
an individual (or several individuals—co-authors).[62] The objects of author’s rights include (we shorten
the statutory language a bit): (1) literary works; (2) dramatic etc. works; (3)
choreographic works and pantomimes; (4) musical works
with or without text; (5) audiovisual works [including
motion pictures]; (6) pictorial, graphic, sculptural,
etc. works; (7) decorative and scene-design works; (8)
architectural and town-planning works, including drawings
etc.; (9) photographs etc.; (10) geographical maps etc.;
(11) other works.[63] As we see, the list is left open. Computer programs are protected as literary works.[64] Ideas, processes, discoveries, facts, programming
languages, etc. are not covered by author’s rights.[65] Official documents, state symbols, folklore,
and news are all excluded from legal protection.[66]
No formalities (like
registration or copyright notice) are required for legal
protection of the works. Copyright notice (e.g., © Ivanov 2008) is optional.[67] For computer programs and databases voluntarily
registration is available.[68]
A translator owns “author’s
rights” in the translation but must observe the rights
of the original work author. Essentially the same is true for any derivative
work, including compilations, databases, etc.[69]
The author’s “exclusive
right” in the work is the right to “use” it in any form,
including the following: (1) to reproduce the work (an exemption for temporary
“technological” reproduction of a computer program for
lawful purposes is made); (2) to distribute the work in
the original or in copies; (3) to display the work publicly;
(4) to import the original or copies of the work for distribution;
(5) to rent out the original or a copy of the work; (6)
to perform the work publicly; (7) to broadcast the work;
(8) to communicate the work by cable; (9) to translate
or transform the work; (10) to implement an architectural
etc. project; (11) to make the work publicly available
(the latter arguably includes placing the work on a website).[70] With certain exceptions (most notably, for computer
programs), the reproduction of a published work by an
individual for purely personal needs is allowed.[71] Also allowed, to a limited extent, is the use
of the work for informational, scientific, educational,
or cultural purposes (“fair use”). A number of other exemptions are made, most notably,
granting limited rights for modifying, archival copying,
reverse engineering, and decompiling (for achieving interoperability
only) computer programs.[72]
The term of protection
of the exclusive right is the life of the author plus
seventy years (starting from January 1 of the year following
the year of death). The
law envisages certain modifications (e.g., for anonymous
works the term is seventy years from publication).[73] Interestingly, some special exceptions are made
for authors who were participants of the Second World
War (as well as for some others). Note that no special term is envisaged for corporate
works: a company
cannot be an “author” (although it can be an exclusive
right owner). After
the expiration of the term the work falls into the public
domain.[74]
The exclusive right can
be assigned or licensed.[75] Notably, a shrink-wrap license for computer programs
is explicitly authorized.[76] The “contract of author order” is defined as
a contract by which the author promises to create a work
of science, literature, or art for the ordering party.[77] Although author’s rights in the work made for
hire belong to the author himself, the exclusive (economic)
right generally belongs to the employer.[78] “Technical means of the author’s right protection”
(e.g., software protection against copying) cannot be
legally removed without a right owner’s permission.[79]
In case of an infringement,
the right owner can claim, instead of actual damages,
a statutory compensation equal to (1) 10,000 to 5 million
rubles, at the court’s discretion, or (2) double the value
of the copies or double the value of the rightful license
under similar conditions.[80] It is not exactly clear what is meant by “value
of the copies”: while
a licensed copy of, say, Microsoft Windows, can cost about
$200, pirated copies are currently marketed in Russia at about $2.
To summarize, despite
some relatively minor problems, the chapter provides for
comprehensive protection of copyright and other author’s
rights in virtually all types of expressive works. No formalities are required for legal protection. The general protection term is “life plus 70.” Certain “fair-use” exceptions are made. A number of sui generis provisions are envisaged for
computer software.
“Neighboring rights,”
covered by Chapter 71, are the intellectual rights related
to (“neighboring with”) author’s rights, namely, the rights
belonging to performers, producers, broadcasters, and
some others. They
include exclusive (economic) rights and some personal
non-property (moral) rights. The objects of the neighboring rights are: (1) performances; (2) phonograms; (3) broadcasts;
(4) databases; and (5) publications of public-domain materials.[81]
No formalities are required
to obtain legal protection.[82] Foreign works are protected if covered by an
international treaty.[83] Notice on phonograms (e.g., (p) Ivanov 2008)
is optional.[84] Many provisions of the chapter reproduce mutatis mutandis the author’s rights chapter
provisions, including various exceptions from the protection,
the assignment and licensing provisions, the technological
protection provisions, and the liability provisions.[85]
Separate sections (each
consisting of several articles) cover the rights of performers,[86] phonogram producers,[87]
broadcasters,[88] database producers,[89] public-domain material
publishers.[90] The terms of protection are different: for performances—the life of the performer, but
not less than fifty years;[91]
for phonograms—fifty years from the publication (or from
the date of the record for unpublished phonograms);[92]
for broadcasts—fifty years from the date of the broadcast;[93] for databases—fifteen
years from the publication;[94] for public-domain
material publications—twenty-five years from the publication.[95] The terms begin to run from January 1 of the
year following the relevant date.
A notable novelty here
is the protection of databases and public-domain-material
publications as neighboring rights objects. As for public-domain-material publication provisions,
although statutory language seems somewhat vague, they
are apparently intended to protect the first publisher
of a previously unknown old manuscript and alike.[96] As for databases, note that they are also protected
against wholesale copying by the author’s rights chapter
(as far as the selection and arrangement of the materials
is concerned);[97] in contrast, in
this chapter databases are protected against the unauthorized
extracting and re-use of the materials contained therein.[98] The database producer owns the (transferable)
exclusive right to extract from the database and use in
any form the materials contained therein; however, the
“extraction” is defined narrowly, as transferring the
whole database or its substantial part onto a different
information carrier.[99] Protection is granted only if the creation of
the database requires substantial financial, material,
organizational, and other expenses; a database containing
at least 10,000 elements is presumed to be protectable.[100]
One of the most controversial
provisions of this chapter is the one saying that the
term of the protection of a database is renewed each time
the database is updated.[101] Obviously, the provision is intended to protect
publishers of renewable databases, especially electronic
legal systems (e.g., Garant and Consultant Plus). However, the statutory language, taken literally,
means that even immaterial additions are able to renew
the database protection indefinitely. While the Fourth Part drafters borrowed much
of the database-protection language from the European
Union directive on the subject-matter,[102] in this particular provision the drafters
omitted the requirement for the change to be “substantial”
(in investment terms) in order to renew the term of the
protection.[103]
To summarize, the chapter
covers legal rights of artistic performers, phonogram
producers, and broadcasters. As a legal novelty, it also protects database
producers and public-domain material publishers. Some of the database-related provisions seem
controversial.
Chapter 72 is devoted
to patent rights. Patent rights are the intellectual rights in
(1) inventions, (2) utility models, and (3) industrial
designs.[104] Note that all three types of objects are envisaged
by the Paris Convention.[105] The author initially owns the exclusive right
and the right of authorship, as well as some other rights
(such as the right to obtain a patent).[106]
In Russia exclusive rights
in inventions, utility models, and industrial designs
are recognized only if they are certified for patents
issued by the relevant state agency (currently Rospatent),
or patents covered by appropriate international treaties
(currently the Eurasian patent).[107]
As always, the author
is an individual (or several individuals—co-authors).[108] Some objects “contrary to public interests, the
principles of humanity and morality,” such as human cloning
methods, are explicitly excluded from the subject matter
of patent protection.[109]
An invention is described
as a technical solution in any field which is related
to a product (in particular, a device, a material, a culture
of a microorganism, a culture of plant or animal cells)
or a method (a process of manipulating a material object
by physical means). An invention is patentable if it is (1) new,
(2) a non-trivial “inventive step” [non-obvious, in the
U.S. patent parlance],
and (3) “industrially applicable” [useful].[110] All terms are carefully defined.[111] The disclosure of the invention-related information
does not exclude invention patentability if the application
for a patent is filed within six months from the date
of disclosure.[112] Discoveries, scientific theories and mathematical
methods, aesthetic solutions, business methods, computer
programs, etc. are not recognized as inventions.[113] Plant varieties and animal breeds (excluding
microorganisms), as well as integrated circuit topologies
are not inventions (they are protected separately, as
discussed below).[114] Special provisions are envisaged for “[state-]secret
inventions.”[115]
A utility model is described
as a technical solution related to a device. A utility model is protectable if it is (1) new
and (2) industrially applicable. Note that non-obviousness is not required for
a utility model. Other
provisions related to inventions are reproduced mutatis
mutandis.[116]
An industrial design
is described as an artistic design solution of a product
of industry or useful art, determining its appearance. An industrial design is protectable if it is (1)
new and (2) original. Functional
solutions, most architectural objects, as well as “unstable-form”
objects (made of a liquid or like substance) are not protected
as industrial designs.[117]
Exclusive rights in inventions,
utility models, and industrial designs are protected subject
to their registration by a state agency (currently Rospatent)
that issues a relevant patent.[118]
The author of an invention,
utility model, or industrial design owns a (moral) right
of authorship, that is, the right to be called its author. This right is unassignable.[119] She also initially owns the right to obtain a
patent; however, this right is assignable.[120] The exclusive (economic) right to “use” the invention,
utility model, or industrial design belongs to the patent
owner; this right is also transferable.[121] “Use” is carefully defined and includes importation,
manufacture, application, offer to sale, and sale of the
relevant products.[122] Certain “fair-use” exceptions are envisaged by
the law, including scientific experimentation with the
product and its use for personal non-commercial needs.[123]
Note that the Russian
priority system is “first-to-file” rather than “first-to-invent.”[124] Perhaps the “first-to-file” system is somewhat
less fair but it is much easier to administer. To enhance fairness, a “prior-use” exception
is envisaged by the law: if a person in good faith used a solution in Russia (invention etc.)
that is identical to a patented one but created independently
before the priority date of the solution, then that person
has the right to continue with its use, but without expanding
the scope of the usage.[125] If a patent owner does not use her invention
etc. for a certain period, a court can grant a compulsory
non-exclusive license to any interested person.[126]
The term of protection
is twenty years for inventions, ten years for utility
models, and fifteen years for industrial designs, beginning
with the date of filing. In some circumstances the term can be prolonged
(for five years—in case of inventions related to medicines
etc.; for three years—in case of utility models; for ten
years—in case of industrial designs).[127] On the expiration of the protection term the
solution falls into the public domain.[128]
Patent owners rights
can be assigned or licensed to another person; both types
of contracts are subject to state-agency registration.[129]
If an invention, utility
model, or industrial design is created for hire, the authorship
right belongs to the author, but the exclusive (economic)
right belongs to the employer, absent provisions to the
contrary in the employment or other contract between the
parties. However, if within the time period of four months
the employer does not file a patent application, transfers
the right to someone else, or decides to keep it secret,
the right to obtain a patent passes to the employee.[130] The excusive rights in a solution created by
an independent contractor generally belong to that contractor,
with industrial designs created in pursuance of a contract
being an exception.[131]
Formalities related to
filing an application and obtaining a patent are covered
in detail in the Fourth Part of the Civil Code.[132] The application for a patent for an invention
must include (1) the indication of the author and the
patentee; (2) a description of the invention “disclosing
it with the completeness sufficient for implementation”;
(3) the “formula of the invention” expressing its essence
[claims]; (4) drawings etc., if needed; and (5) a synopsis.[133] Essentially the requirements for a utility model
patent application are the same.[134] An industrial design patent application must
contain (1) the indication of the author and the patentee;
(2) a set of graphic images of the product; (3) drawings
etc., if needed; (4) a description; and (5) a list of
important features of the design.[135] Amendments to the application may be made before
the patent is issued, unless they change the “essence”
of the solution (as defined).[136] In certain circumstances an application for an
invention can be converted into an application for a utility
model.[137]
As mentioned above, the
priority is determined by the date of filing.[138] The priority of a foreign invention, utility
model or industrial design may be established by the filing
date of the first application in a country-participant
of the Paris Convention, if the application in Russia
is filed within twelve months (for inventions and utility
models) or six months (for industrial designs) from the
filing of the original application; the applicant should
also notify (during a certain period) the Russian state
agency of her intention to file such an application.[139] If two identical applications have the same priority
date, the patent can be issued only under one of the applications,
as it should be determined by an agreement between the
applicants.[140]
The expert examination
of the application for an invention first includes a formal
examination (as to the completeness of the set of documents).[141] After eighteen months form the filing date the
information about the application is officially published,
provided the application passed the formal examination.[142] The expert examination of the invention on the
merits is carried out on a petition from an applicant
submitted in three years from the application filing date.[143] The examination on the merits includes (1) an
information search and (2) a verification of the patentability
of the invention.[144] The information search results are reported to
the applicant normally within six months from the beginning
of the examination on the merits.[145] If the examination is passed, the state agency
issues a patent; otherwise, it issues a refusal to grant
a patent.[146] The applicant may challenge the refusal in the
Patent Dispute Chamber.[147] Note that there is no way for a third party (say,
an independent inventor) to challenge a pending application
in the Patent Dispute Chamber.
In case of a utility
model the expert examination does not include any verification
of the model’s patentability.[148] That is, the examination is only formal; any
potential problems with patentability are left to be resolved
by future litigation. In
contrast, the expert examination of an industrial design
includes both formal examination and examination on the
merits.[149]
Temporary legal protection
is granted to an invention between the date of the publication
of the application information and the date the publication
of the information on issuing the patent (provided the
patent is issued).[150]
An invention, utility
model, or industrial design is entered into the state
register on issuing the patent.[151] The information about the patent is officially
published.[152]
In six months from the
application date the applicant is allowed to file a similar
application in another country unless she is informed
that the application contains information that is a state
secret.[153] A prior Russian application is not required,
if the international application is filed through the
Russian state patent agency under the terms of the Patent
Cooperation Treaty or the Eurasian Patent Convention (see
above).[154]
A patent can be invalidated
in the following cases: (1) the solution is unpatentable; (2) the formula
etc. in the issued patent does not correspond to that
in the application; (3) the patent has been issued with
a violation of priority rules; (4) the author or the patent
owner indicated in the patent is wrong.[155] In the first three cases the first-instance forum
is the Patent Dispute Chamber, in the fourth case a patent
is challenged in court.[156] A patent can be challenged by any person.[157] A patent can be also terminated in case of non-payment
of maintenance fees.[158] Generally, patent-right-related disputes are
solved either by courts (for issues related to the establishment
of authorship or patent ownership, to infringements etc.)
or by the Patent Dispute Board, an administrative body
(for issues related to expert examination, patentability
etc.), with a possibility to appeal to a court.[159]
Comparing the new statutory
provisions with those of the existing patent law, we see
that the changes are relatively minor. Most notably, new terminology is introduced: the rights for inventions, utility models, and
industrial designs are now called “patent rights,” a previously
unknown term. The
terms of protection for utility models and industrial
designs are now longer (ten vs. five years for utility
models and fifteen vs. ten years for industrial designs). Otherwise, the changes are mostly editorial.
To summarize, “patent
rights” protect inventions, utility models, and industrial
designs. The term of protection for inventions is twenty
years. The priority
rule is “first-to-file.” Utility models significantly differ from inventions
in that (1) utility models are not necessarily non-obvious,
and (2) there is no examination on the merits carried
out for utility models.
Chapter 73 is devoted
to the legal protection of “agricultural selection achievements,”
that is, plant varieties and animal breeds. The author of the achievement initially owns the
exclusive right in it and the right of authorship, and
can own some other rights, like the right to obtain a
patent.[160] To be protected, the achievement must be patented.[161] The objects of the intellectual rights in selection
achievements are plant varieties and animal breeds registered
in the relevant register, if they satisfy certain criteria;
“variety” and “breed” are carefully defined.[162] Patents are issued only for plants and animals
of certain species, the list of which is determined by
a governmental agency.[163] To be protectable, the selection achievement
must be (1) new, (2) distinguishable, (3) homogenous,
and (4) stable.[164] A selection achievement is subject to state registration.[165] A state agency (this is not Rospatent, but a
separate agricultural agency) issues a patent to the applicant
and may also issue an “authorship certificate” to the
author.
The patent holder owns
the exclusive right to “use” (as defined) the selection
achievement.[166] Certain statutory exceptions are envisaged, including
personal non-commercial use, experimentation, and most
actions with the plants and animals put into “civil circulation”
(stream of commerce) by the patent owner herself.[167] In three years form issuing a patent, a compulsory
license is available for any interested person.[168] The term of protection is thirty years from the
date of the state registration of an achievement.[169] After the expiration of the term the achievement
falls into the public domain.[170]
The exclusive right in
a selection achievement may be either assigned or licensed.[171] If an achievement is created for hire, the authorship
right belongs to the employee, but the exclusive right
generally belongs to the employer.[172]
An application for a
patent for an agricultural selection achievement must
include (1) a statement identifying the author and the
patentee, (2) a form describing the achievement, and (3)
a confirmation of the payment of the state duty.[173] The priority date is the date of filing.[174]
The examination includes
a preliminary examination (within a month from the date
of filing),[175] an examination
for novelty (only if petitioned for by “any interested
party”),[176] and tests for
distinguishability, homogeneity, and stableness.[177] If it passes examination, the state agency will
register the selection achievement and issue a patent.[178] The patent owner is obliged to maintain the plant
variety or animal breed during the whole term of the patent
duration.[179] A patent can be invalidated (on certain grounds)
by the same state agency on a petition of “any person.”[180] Information on the applications and patents is
officially published.[181]
Infringement, as defined
by the law, includes not only unauthorized “use” of the
achievement, but also trademark-like violations, such
as improper use of the name of the achievement.[182] A patent owner may request publication of a court
decision recognizing the infringement.[183]
To summarize, sui generis protection is granted to plant varieties and animal breeds. State registration is required. The term of protection is thirty years.
Chapter 74 is devoted
to the legal protection of microchip topologies. Integrated circuit topology is described as “spatial
geometric arrangement of the set of integrated circuit
elements and relations between them.”[184] To be protectable, the topology must be original.[185] The author of the topology initially owns the
exclusive right in the topology and the right of authorship,
as well as some other rights.[186] The state registration of a topology is optional.[187] The application includes (1) a statement identifying
the applicant and (optionally) the author, (2) an identification
of the topology, and (3) a duty payment confirmation.[188] The application is filed with the authorized
state agency (currently Rospatent).[189]
The exclusive right is
the right to “use” the topology (reproduction of the topology,
importing and sale of a relevant chip); however, a person
who independently created the same topology also owns
independent exclusive rights to use it.[190] Several exceptions (actions not being an infringement)
are envisaged, such as using the topology for personal
non-commercial needs, evaluation, analysis, research,
or education.[191] A notice on the topology or microchips (like
[T] Ivanov 2008) is optional.[192] The term of protection is ten years from the
first use or from the date of state registration, whichever
is earlier.[193] The exclusive right can be either assigned or
licensed.[194] If a topology was created in the context of an
employment relationship, then the employee owns the authorship
rights, but the employer owns an exclusive right.[195]
To summarize, sui generis protection is granted to microchip topologies. State registration is optional. The term of protection is ten years. For a typology, authorship rights remain with
the employee who created the typology, but the employer
receives an exclusive right.
Chapter 75 is devoted
to trade secrets. In a literal translation, its title is “Right
for a Secret of Production (Know-How).” Note that the statutory language refers to secrets
of “production.” However, the term is defined rather broadly (see
below), and we translate it as “trade secret” rather than
“secret of production.” Note also that “know-how” is used as a synonym
for a trade secret. That
is, in Russia there is no such
thing as a non-secret know-how.
A trade secret (know-how)
is defined as “any information (industrial, technical,
economic, organizational, etc.), including information
about results of intellectual activity in scientific and
technical sphere, and also information about means of
carrying out professional activity, [1] which derives
actual or potential commercial value from being unknown
to third parties; [2] to which third parties do not have
legally permissible access; and [3] in respect to which
the information owner introduced the regime of commercial
secrecy.”[196]
The regime of commercial
secrecy is defined separately, by the legislation on commercial
secrecy. Note that in this case the existing legislation
(Commercial Secrecy Law, see above) is not intended to
be abolished, except for some provisions. The regime of commercial secrecy includes certain
statutorily prescribed measures, such as (1) determining
the list of the information constituting commercial secret;
(2) limiting access to this information; (3) registering
the persons having access to the information; (4) contractually
regulating the usage of the information by employees and
commercial partners; (5) marking secret documents with
a stamp “Commercial Secret of . . . .”[197]
A trade secret owner
has the exclusive right of use. However, a person who obtains in good faith and
independently the same information as contained in the
trade secret owns an independent exclusive right for the
same trade secret.[198] The right is exclusive for as long as the information
remains confidential.[199]
A trade secret can be
either assigned or licensed; in the latter case both the
licensor and the licensee must keep the information secret.[200] The exclusive right in a trade secret created
for hire belongs to the employer.[201]
An infringer, including
both the person who illicitly obtained the information
(and later disclosed or used it) and the person who illicitly
disclosed the information, is liable for damages, unless
other liability is envisaged by law or a contract.[202]
To summarize, trade secrets,
broadly defined, are legally protected as long as owners
keep them secret. The protection is lost if the information is
no longer confidential.
Chapter 76 is devoted
to “means of individualization,” including firm names,
trademarks and service marks, appellations of (geographical)
origin of goods, and commercial designations. As mentioned above, domain names have been excluded
from the original draft. The relevant articles are grouped into four sections.
1. Firm Names
Although the drafters
of the first three parts of the Civil Code apparently
meant by “firm name” something different from just “company
name” (perhaps something similar to a trade name), in
the Fourth Part the term is defined as a synonym to the
name of a company. (Accordingly, some amendments to the other parts
of the Civil Code will be needed.) Only commercial organizations’ names can be properly
called “firm names.” A
firm name includes an indication to the organizational
form of the company (Limited Liability Company, Closed
Joint-stock Company, Open Joint-stock Company, etc.).[203]
A company owns the exclusive
right to use its firm name as a means of individualization,
including its usage in letterheads, signboards, ads, and
for marking goods. The right is unassignable. The usage by another company of an identical
or similar name is not allowed, if the second company
carries on “analogous activity.” The priority date is the date of the state registration
of the firm name. The
other (infringing) company must cease using the firm name
in respect to the “analogous activities” and pay damages.[204]
The exclusive right is
based upon the (federal) registration of the firm name
in the Unified State Register of Legal Persons.[205] (Note that multiple entries of identical names
are allowed.) A
firm name or its elements can be used by the right owner
as a part of its commercial designation or trademark (service
mark).[206]
To summarize, firm names
are company names. While
generally firm names can be similar or even identical,
the usage of a similar firm name for carrying out similar
activity is not allowed for another company.
2. Trademarks and Service Marks
The provisions of this
subsection, in essence, restate the provisions of the
current Trademark law. A trademark is described as a designation for
identification of the goods of legal persons or individual
entrepreneurs. A service mark is a similar designation identifying
works or services. The
rules for service marks are the same as those for trademarks.[207]
Only a legal person or
individual entrepreneur can own exclusive rights in a
trademark (that is, an individual not being a registered
entrepreneur can not be a trademark owner).[208] The exclusive right for a trademark in Russia originates from
the trademark registration with the relevant state agency
(currently Rospatent) or from an applicable international
treaty (all current treaties also require registration
in Russia).[209] The registering agency issues a trademark certificate
attesting the exclusive right to use the mark and the
priority date.[210] Unregistered trademarks are not protected by
trademark law (but see below on the protection of “commercial
designations”).
Any “verbal, graphic,
three-dimensional, and other designations or their combinations”
can be registered as trademarks. A trademark can be registered “in any color or
combination of colors.”[211] (Apparently though, pure color is not registerable
as a trademark.)
There is a long list
of reasons why a designation cannot be registered as trademark. A trademark can not be registered if it does not
have “distinctive capacity.” A mark also cannot be registered if it (1) became
widespread for designation of certain goods [generic];
(2) is a commonly used symbol or term; (3) characterizes
goods [descriptive]; or (4) represents the form of the
good determined by its purpose [functional]. However, this restriction does not apply if a
designation acquired distinctive capacity as a result
of its use [secondary meaning]. Certain elements, like state symbols are not allowed
to be registered as trademarks. Also disallowed are false designations and those
“contrary to public interests, principles of humanity
and morality.” Special restrictions are envisaged for foreign
wine names (in accordance with international treaties
of which Russia is a signatory). A designation cannot be registered as a trademark
if it is identical or “similar to a degree of confusion”
to (1) a trademark filed for registration with an earlier
priority date by another person with respect to similar
goods; (2) a trademark already protected in Russia, including
those protected under an international treaty, with respect
to similar goods; or (3) a trademark recognized as “well-known”
[famous] with respect to similar goods. (On famous marks see below.) A designation also cannot be registered if it is
identical or similar to a degree of confusion to
a protected geographical indication of origin,
a protected firm name, commercial designation, or the
name of an agricultural selection achievement. Unregisterable are designations identical to a
well-known name of a book, its character etc. (without
a permission of the right owner), to the name, portrait,
etc. of a publicly known person (without her permission),
as well as to an existing industrial design, certification
mark, or domain name.[212]
Note that no prior use
or intent to use is required for a trademark registration.
A mark owner owns the
exclusive right to use the mark in any legal way, such
as for marking goods, displaying the mark in relation
to services provision, placing the mark on the documents
related to goods, using it in advertising, or in the Internet
(e.g., in a domain name). Nobody can use a similar mark for the same or similar
goods, if it would result in a probability of confusion.[213]
The notice sign (®) is
optional.[214] If a mark is not used for a period of three years,
its protection can be terminated on a petition of an interested
person to the Patent Dispute Chamber.[215]
The exclusive right in
a trademark can be either assigned or licensed.[216] Both types of contracts must be registered with
the state agency.[217] The term of protection is ten years, but it can
be prolonged for an unlimited number of times.[218]
The application for trademark
registration must include (1) a statement identifying
the applicant; (2) the claimed designation; (3) a list
of the goods in respect to which registration is required;
(4) a description of the claimed designation.[219] Any person has the right to access the application
documents.[220] The priority is determined by the date of filing
of the application.[221] Under the terms of the Paris Convention, the
priority can also be determined by the date of filing
in another member country, if the applicant filed an application
in Russia within six months
from the original filing.[222] If the priority dates for two applications are
the same, the mark is registered in the name of only one
applicant, as determined by an agreement between applicants.[223]
The state agency (Rospatent)
carries out an examination of the application. It includes a formal examination (whether the set
of documents is complete), done within a month from the
date of application, and an examination of the designation
(whether it is registerable). Notably, while the examination of the designation
includes check it against the existing trademarks and
geographical designations of origins, it does not include
checking against the existing firm names, commercial designations,
domain names, etc.[224] Thus, any possible coincidences are left to future
litigation.
In case of a positive
decision the state agency enters the trademark into the
state register and issues a certificate for the trademark.[225] Relevant information is officially published.[226] Russian legal or physical persons can register
a trademark in a foreign country or internationally (in
accordance with an international treaty). An international registration application is filed
with the same Russian state agency.[227]
Well-known [famous] trademarks
are protected separately. A mark can be recognized as famous by the state
agency (Rospatent) if the mark became widely known in
Russia among relevant
consumers in respect to goods of the mark owner as a result
of intensive use of the mark. It is important to note that, in order to be recognized
as a famous mark, a designation need not be a registered
trademark. Even
an unregistered designation can become a famous mark. However, a mark cannot be recognized as famous
if it became widely known after the date of priority of
a similar registered mark of another person that is related
to similar goods. Legal protection of a famous mark is similar
to the protection of a “normal” mark, although unlimited
in time. It also covers non-similar goods if its use by
another person will mislead consumers, possibly impairing
interests of the famous mark owner.[228]
If the state agency recognizes
a mark as famous (on application of the mark owner), it
enters it into the register of famous marks and issues
a relevant certificate.[229]
Separate provisions govern
collective marks, defined as trademarks for identifying
goods produced or sold by persons belonging to a certain
association, such goods having common quality or other
characteristics. A
collective mark cannot be assigned or licensed.[230] A collective mark is also subject to state registration.[231]
Registration of a trademark
can be cancelled and trademark legal protection removed
on a number of grounds. Registration is cancelled if the mark was initially
unregisterable. However,
if the reason for invalidation is the trademark identity
or similarity to another mark or geographical indication
of origin, the cancellation is possible only in five years
from the official publication of the trademark registration
information. There
are also other reasons for trademark invalidation, including
“abuse of rights” and “unfair competition” by the mark
owner.[232]
Legal protection of a
trademark can be challenged in the Patent Dispute Chamber
of the state agency (Rospatent), whose decisions can be
further challenged in a court.[233]
Goods, labels and packaging
illicitly bearing a trademark, or a designation similar
to it to a degree of confusion, are considered counterfeit. The right owner has the right to require withholding
from circulation and destroying the counterfeit items. Instead of damages, the right owner may demand
from the infringer a statutory compensation in the amount
of (1) 10,000 to 5 million rubles, or (2) double the value
of the goods or double the value of the relevant license
under similar conditions.
To summarize, the legal
protection of a trade mark is based on its state registration. The priority rule is “first-to-file.” Neither prior use nor intent to use is required
for the registration. However,
the mark can be cancelled if not used for three years. The term of protection is ten years, with the possibility
of unlimited prolongation. Famous marks are registered and protected separately.
3. Appellations of Origin of Goods
The provisions of this
subsection also mostly preserve the already existing Trademark
Law. A protectable appellation of origin of goods
is a toponym (geographical indication) that became known
as a result of its use in relation to a good, the special
qualities of the good originating exclusively or essentially
from place-specific natural or human factors. The producers of such goods may obtain the exclusive
right to use the appellation of origin. Geographical indications that became generic
are not recognized as protectable appellations of origin.[234]
Note the “special quality”
requirement: a geographical indication is protectable only
in relation to specific characteristics of the goods originating
from the place.
For protection the appellation
of origin must be registered with the state agency (Rospatent). If the geographical object in question is located
in a foreign country, the appellation of origin can be
registered in Russia, but only if
the appellation is also protected in that country.[235]
An appellation of origin
can be registered in the name of one or several legal
or physical persons. They all have the exclusive right to use the
appellation, provided they maintain the special quality
of the goods. However, any person producing goods in the same
place with the same special qualities can also obtain
the exclusive right to use the appellation of origin.[236]
The exclusive rights
of an appellation of origin owner are similar to those
of a trademark owner. However, an appellation of origin can not be
assigned or licensed.[237]
Notice on goods (“Registered
Appellation of Origin”) is optional.[238] The protection can last as long as there are
conditions to produce the “special quality” goods.[239]
An application for appellation
of origin registration must include (1) an identification
of the applicant, (2) the claimed appellation, (3) identification
of the good, (4) identification of the place, and (5)
a description of special qualities of the good. Also needed is a certificate issued by an authorized
state agency saying that the applicant in that place produces
those goods with the special qualities originating exclusively
or essentially from the place-specific natural or human
factors. If the
geographical object is abroad, a document certifying the
right of the applicant to use the appellation in the relevant
country is needed.[240]
The state agency carries
out a formal examination and the examination of the designation. If the examination is passed, the appellation
of origin is registered.[241] A relevant certificate is issued.[242] A negative decision of the state agency can be
challenged in the Patent Dispute Chamber.[243]
The term of protection
is ten years from the date of filing; it can be prolonged
indefinitely if the right owner presents a state-agency
certificate saying that he continues to produce the same
quality goods in the same place (in case of a foreign
appellation–that he still owns the right in the country
of origin).[244]
The registration of an
appellation of origin can be challenged on certain grounds,
including confusing similarity to a trademark with earlier
priority.[245] The legal protection is also removed if the production
of the “special quality” goods is no longer possible for
some reason.[246] The remedies in case of an infringement are similar
to those applicable in case of a trademark (including
the amount of the statutory compensation).[247]
To summarize, appellations
of origin are geographical indications associated with
special-quality goods; such special qualities originating
from the place-specific natural or human factors. The legal protection of appellations of origin
is similar to that of trademarks, but multiple producers
can own relevant exclusive rights. State registration is required. The term of protection is ten years, but it can
be prolonged indefinitely.
4. Commercial Designations
Commercial designations
are a substantial novelty for Russian IP law; previously,
although they were mentioned in passing in the second
part of the Civil Code, nobody knew for sure what they
are. Now commercial designations are described as
designations, other than firm names, used for the individualization
of trade, industrial, and other enterprises. A commercial designation can be used either by
a legal person (including non-commercial organizations
having the right to carry on entrepreneurial activity)
or by an individual entrepreneur. No state registration is required or allowed for
a commercial designation. A commercial designation can be used for the individualization
of one or more enterprises; however, one enterprise cannot
be individualized by two or more commercial designations.[248]
The owner has the exclusive
right to use her commercial designation for the individualization
of her enterprise in any legal way, including placing
them on signboards, letterheads, goods and their packaging,
if the designation is distinctive and known within a certain
territory. Disallowed
is the use of a misleading commercial designation, in
particular, similar “to a degree of confusion” to a firm
name, trademark, or protected commercial designation belonging
to another person (if his exclusive right appeared earlier). A commercial designation can be transferred only
together with the relevant enterprise. The right to use the commercial designation can
be granted in relation to a contract of lease of the enterprise
or a franchise contract.[249]
The right to use a commercial
designation is terminated if the designation is not used
for one year.[250] The exclusive right for a commercial designation
is independent of the right for a firm name (that is,
the two can be completely different). A commercial designation or its elements can be
used in a trademark; however, the commercial designation
is protected independently.[251]
Therefore, in some respects
a commercial designation is similar to an “unregistered
trade name,” while in other respects it is similar to
an “unregistered trademark.”
To summarize, a commercial
designation is a designation for identifying an enterprise,
like an unregistered name of a shop or a factory. In some respects commercial designations are similar
to trademarks. However,
no state registration is required for the legal protection
of a commercial designation.
In sum, there is a number
of legally protected “means of individualization,” including
firm names, trademarks and service marks, appellations
of origin of goods, and commercial designations. At present, it is not exactly clear how their
legal protection will interact (e.g., where a commercial
designation of one person is similar to a firm name of
another person). Apparently, many questions are left to be solved
by the judicial practice.
Finally, Chapter 77 is
devoted to something previously unknown to Russian law
called “unified technology”. A unified technology is described, somewhat vaguely,
as a result of scientific and technical activity, expressed
in an objective form, and comprising inventions, utility
models, industrial designs, computer programs, or other
protectable results of intellectual activity, that can
be a technological basis of a certain practical activity
in the civil and/or military spheres. A unified technology can also include non-protectable
results of intellectual activity, like technical data
or other information. All
elements of the unified technology are protected under
appropriate rules (and are not necessarily owned by the
technology owner). However, the right to use them in combination
belongs to the person who “organized the creation” of
the unified technology based on contracts with the respective
exclusive right owners of the technology elements.[252]
Notably, the provisions
of the chapter are applicable only to the technologies
created using the state (federal or regional) financing.[253] The person who “organized the creation” of a
state-financed unified technology has rights in the technology
as well as the obligation to implement it in practice.[254] In certain cases (such as defense technologies)
the rights in a certain technology belong to the state.[255] In certain cases the state can assign its rights
in the technology to another person.[256] A private person generally can assign or license
its rights in the technology.[257] The technology should “preferably” be used in
Russia; exporting a state-financed technology requires the permission of
the state as well as state registration.[258]
Besides the Fourth Part
of the Civil Code, there is also the law on its enactment.[259] It says that the Fourth Part is effective beginning
on January 1, 2008, and abolishes a number of existing
laws, decrees, etc.[260] Certain transitional provisions were also made.[261]
A number of amendments
were made to the First and Second Parts of the Civil Code,
reflecting new terminology, such as the new notion of
“intellectual rights.” Most importantly, the fundamental list of the “civil
right objects” (found in Art. 128 GK RF) will now read
as follows: “[1] things, including money and securities,[262] other property, including property rights; [2]
work and services; [3] protected results of intellectual
activity and means of individualization equated to them
(intellectual property); [4] non-material benefits.” Notably, “information” has been excluded form the
list.[263]
Apparently, “information”
has been excluded with a view to avoid an overlap with
“intellectual property” (as earlier discussed, “trade
secrets” are defined as certain information). However, the status of non-secret information
is now rather uncertain. Apparently, it is no longer a civil right object. Arguably, this holds some tension with the existing
law relating to information.[264]
Note that “intellectual
rights” are not the same as “intellectual property,” as
now defined. The intellectual rights being exclusive rights
(e.g., in an invention) are “property rights,” belonging
to the first category.[265] The intellectual rights being personal non-property
(moral) rights are “non-material benefits,” belonging
to the fourth category.[266] The status of “other” intellectual rights (such
as the right of access to one’s own work) is not exactly
clear.
The First Part of the
Civil Code is also supplemented by Art 1521, protecting an individual against misappropriation
of his or her image (a photograph, etc.).[267]
The most important amendments
to the Second Part of the Civil Code are made to the chapter
describing a franchise contract. The amendments reflect new understanding of the
notion of “firm name” that is now just a company name
that cannot be licensed to a franchisee. In addition, the franchise contract must now be
registered with the state agency in intellectual property
(Rospatent) rather than with a tax authority.[268]
A number of other amendments
to various laws are also made. Most importantly, certain provisions of the Commercial
Secrecy Law are abolished.[269]
Most of the above-mentioned
provisions will also have legal effect starting on January
1, 2008.
While this is outside
of the scope of this paper, it is also noteworthy that
certain IP rights in Russia are protected
not only by the civil legislation, but also by the criminal
and administrative legislation currently in force.[270]
The new Russian IP legislation
is an important step in the development of Russian IP
law. It systematizes and unifies existing law. In many respects the new legislation restates the
existing laws with relatively minor amendments. However, some completely new notions, like that
of a “unified technology,” are introduced.
Despite certain arguably
minor inconsistencies, the new IP legislation seems to
be generally sound and well thought-out. It corresponds to the current international standards
and treaties, and can be tentatively characterized as
“WTO-ready.” In
addition to the Civil Code itself, IP rights are also
protected by Russia’s current administrative
and criminal legislation.
Importantly, the new
legislation addresses the nagging problem of phony right-management
organizations and, therefore, albeit indirectly, of the
music-selling websites licensed by such organizations. Beginning from January 1, 2008, the right-management
organizations engaged in “non-contractual” licensing will
operate under state supervision. This is definitely good news for the U.S. music industry,
let alone Russian musicians. This move may help Russia to shed its negative
reputation in the international copyright community.
The most important problem
now is enforcement. How
the new Fourth Part of the Civil Code will be applied
by Russian courts is yet to be seen in the future. Nevertheless, the authors of this article are cautiously
optimistic about the new IP legislation. We believe that the legislation is of sufficiently
high quality to promote progress in Russian commerce,
industry, and the arts, as well as progress in Russia’s international
relations.
