The Russian Supreme Arbitration Court stressed priority in disputes on the infringement of exclusive rights

The Presidium of the Russian Supreme Arbitration Court recognised on 8 December 2009 that the use and administration of domain names constituted the infringement of rights to a corporate name.

This Resolution was adopted on case No. A40-53937/08-51-526 of the Moscow Arbitration Court with respect to the dispute on recognising actions involving the administration of domain names as an infringement of rights to trade marks and exclusive rights to use a corporate name and on prohibiting the use of marks similar to trade marks and the corporate name in domain names.

The court of first instance upheld the position of the defendant and dismissed the claims, after concluding that there had been no infringement of the claimant’s exclusive rights to the trade marks, as the registration of disputable domains was carried out long before the claimant registered the trade marks with similar word combinations. The court cited sub-clause 3, clause 9, article 1483 of the Russian Civil Code.

When dismissing the claim with respect to the infringement of the claimant’s right to the corporate name, the court stated that in accordance with clause 4, article 1474 of the Russian Civil Code, the right to a corporate name owned by a legal entity may be violated only by another legal entity, while a defendant, being an individual, did not have a corporate name. Moreover, the court pointed out that the claimant had been registered as a legal entity in 1996. However, the record (state registration number) on entering data in the Unified State Register of Legal Entities about the legal entity registered before 1 July 2002 was made only in 2008, in other words, after the registration date of domain names in favour of the defendant.

The courts of appeal and cassation agreed with the conclusions of the first instance court.

After reviewing the claimant’s application, the Russian Supreme Arbitration Court quashed the legal acts of the lower courts with respect to their dismissal of claims for the protection of the exclusive right to use the corporate name and recognised the defendant’s actions, involving the administration of domain names as violation of rights to the corporate name and prohibited the defendant from using domain names.

The Presidium of the Russian Supreme Arbitration Court concluded that legislation links the protection of the exclusive right to use the corporate name with the date of the state registration of the legal entity, rather than the date when the legal entity started relevant business operations.

Citing the unlawfulness of the dismissal of claims, the Presidium of the Russian Supreme Arbitration Court proceeded from the assumption that confusingly similar domain names had been registered in the defendant’s name subsequent to the emergence of the claimant’s right to the corporate name.

The claimant, however, was denied claims for recognising the administration and use of the domain name as the infringement of rights to the trade mark, as the domains had been registered prior to the registration of the claimant’s right to trade marks and prior to the emergence of the priority. In this context, the Presidium of the Russian Supreme Arbitration Court considered substantiated the refusal of the courts, citing sub-clause 3, clause 9, article 1483 of the Russian Civil Code on the protection of rights to trade marks, including on the collection of compensation.

For further information, please contact:

in Moscow – Alexandra Pelikh, Head of Group «Intellectual property», at: (495) 967-0007 or by e-mail: a.pelikh@pgplaw.ru

in St Petersburg  -  Sergey Spasennov, Partner, Head of St. Petersburg office, on tel.: (812) 333-07-17 or by e-mail: s.spasennov@pgplaw.ru