FEDERATION TO THE WORLD TRADE ORGANIZATION 46 страница

1236. Responding to the concerns of these Members of the Working Party on the term "personal needs" in Article 1273 of the Civil Code, the representative of the Russian Federation informed Members of the Working Party that this term covered the use which was not connected with the extraction of profit.

1237. Members continued to express concerns regarding this limitation on exclusive rights in copyright and neighbouring rights. Actions such as posting a cinematographic work on the internet, without requiring payment to use the work, would cause considerable prejudice to the legitimate interests of the right-holder. Members requested further clarification of what was considered to be used for "personal needs" and assurances regarding the availability of compensation for these reproductions.

1238. In response to Members' concerns and questions, the representative of the Russian Federation explained that Article 1273 covered reproduction of a work only by a natural person and not by any form of juridical person. There could be no distribution for payment. The work must have been made public lawfully prior to the reproduction. He confirmed that Article 1273 had been amended to clarify that any copy must be necessary and exclusively for the personal (private) use of the copier and that the necessity requirement would be applied in a manner that would not undermine this limitation. The copy or reproduction could not be used in connection with entrepreneurial or commercial activities or circulated beyond the immediate use of the individual making the copy. Finally, he confirmed that Article 1273 had been amended to refer to Article 1245 of the Civil Code as applicable in cases of free reproduction under Article 1273.

1239. Continuing his description of the Civil Code, the representative of the Russian Federation explained that Chapter 71 "Related rights" consisted of provisions dealing with the protection of the rights of performers, directors of plays, and conductors on the results of performances; the rights of producers of phonograms and video recordings; and also the rights of on-air and cable broadcasting organizations in their programmes. In his view, the provisions of the Civil Code relating to these three separate categories of exclusive rights was based on and fully complied with provisions of the Rome Convention and the WPPT (1996). In addition, for the first time Russian legislation prescribed protection of the exclusive right of a database producer in the contents of such databases. Although the provisions in the Civil Code in this field were based on international norms for the legal protection of databases, these rights were treated as a related right under the Civil Code.

1240. The representative of the Russian Federation also stressed that the Civil Code, for the first time in the Russian Federation, provided an exclusive right for a publisher under the category of related rights. The Civil Code provided a right to the person, who had first made public a work of literature, science or arts, which met the requirements provided in the Civil Code regarding objects of copyright, but which had not been published within the period of validity of copyright and thus was in the public domain. These provisions were based on the norms of the WTO TRIPS Agreement, Berne Convention, and Rome Convention. In his view, the provisions of the Russian legislation on copyright (including those relating to the protection of computer programs and databases) were in conformity with the provisions of the WCT, the WPPT, the Berne Convention (including Article 6bis), and the relevant provisions of the WTO Agreement on TRIPS.

1241. The representative of the Russian Federation informed Members of the Working Party that, in particular, the Russian legislation protected not only personal non-proprietary rights of authors, such as authorship rights, right to name, publication right, right to protect the reputation of the author, but also property rights of authors which could be inherited. In accordance with Article 1281 of the Civil Code, copyright protection was provided for a work from the date it was created. In general, copyrights were valid during the life of the author and for 70 years after his/her death. In certain cases stipulated by the law, the term of protection was calculated on the basis of other dates (for instance from the date of latest death of a co-author where a work had been created by joint authors). The related rights of performers were protected for 50 years from the date of first performance; in the case of phonograms producers, protection was provided for 50 years from the date of first publication or, should the phonogram not have been made public within 50 years of fixation, protection was provided for 50 years from fixation; rights of television and radio broadcasting organizations remained valid for 50 years from the date of first broadcast, and the rights of cable television organizations remained valid for 50 years from the date of first cable transmission.

1242. He added that Article 1256 of the Civil Code had introduced national treatment in respect of protection of copyright and retroactive protection of works. Previously, under Article 28 of the 1993 Law "On Copyright and Related Rights", works which had never been protected on the territory of the Russian Federation were considered as public domain and not subject to protection. Thus, all foreign works published before 23 May 1973 (the date at which the Russian Federation had joined the Universal Copyright Convention of September 1952) were not protected. However, with the adoption of Federal Law No. 72-FZ "On Amending the Law on Copyright and Related Rights" in 2004, this was remedied. In accordance with this law and after 1 January 2008, Article 1256.4 of the Civil Code, the Russian Federation provided protection to pre-existing foreign works in the territory of the Russian Federation, according to international treaties of the Russian Federation. Such protection was provided for works that had not fallen into the public domain in the country of origin due to the expiration of the term of protection established in that country, and that were not in the public domain in the Russian Federation in consequence of expiration of the term of protection established in Federal Law No. 72-FZ "On Amending the Law on Copyright and Related Rights". Right-holders in such works would be accorded all rights in the field of copyright and related rights as provided for in Article 1256.4 of the Civil Code.

1243. Some Members of the Working Party expressed further concerns regarding the treatment of temporary copies in a number of Articles in the Civil Code (Articles 1270, 1317, 1324 and 1330). These articles did not adequately provide that temporary reproductions of works fall within the exclusive right of reproduction of the copyright owner. Article 9 (1) of the Berne Convention provides that the exclusive right of reproduction extends to reproduction "in any manner or form." The "Agreed statements" on Article 1 (4) of the WCT and Article 7 of the WPPT provide that the reproduction right "fully applies in the digital environment." In these Members' view, providing that temporary reproductions were within the reproduction right was an important aspect of copyright in the digital environment, as the ways in which copyrighted works were being exploited and enjoyed now more often than ever involve temporary reproductions.

1244. The representative of the Russian Federation responded that the term "reproduction" was not defined in the WTO TRIPS Agreement. Article 9.1 of the Berne Convention specified only that authors of products had the exclusive right to permit reproduction of their products by any way and in any form. Article 1270.2 sub-paragraph 1 of the Civil Code defined the reproduction of a product as manufacturing of one or more copy of the product or its part in any material form. In his view, it did not contradict Article 6 of the Berne Convention. He also noted that Article 9.1 of the Berne Convention established criteria on restrictions to the reproduction of works. These restrictions were literally repeated in paragraph 2 of Article 1229.5 of the Civil Code.

1245. He further explained that the concept of reproduction was specified in sub-item 1 of Article 1270.2 of the Civil Code in such a way that along with the record of a product in a computer memory, product recorded on any electronic carrier was also considered as a reproduction. At the same time, during the modern technology process, temporary copies of products could be created. In his view, this situation should be excluded from the list of the cases requiring receiving of the sanction from the right-holder. The same solution was made concerning the temporary copies arising during reproduction (Article 1275.2 of the Civil Code). He considered that it was just one of those "special cases" which were stipulated in Article 9.2 of the Berne Convention. Factually, in this case, one had not made a full scale reproduction of a protected product, but had taken only one of technologically necessary stages of such reproduction.

1246. Members continued to express concerns regarding the protection of temporary copies under the Civil Code. In their view, the Civil Code needed to clearly state that the reproduction right includes the "direct or indirect" preparation of "temporary or permanent" copies. If a limitation or exception to this right was deemed necessary, it should be set-out as a limitation in specific articles of the Civil Code.

1247. In response, the Representative of the Russian Federation explained that sub-paragraph 1 of Article 1270.2 of the Civil Code reflected the directive of the European Union. He explained that the last clause of this sub-paragraph was a limited exception to the exclusive right to use a work as stipulated in the other provisions of Article 1270.2. Of key importance was the requirement that the temporary copy must be for the sole purpose of lawful use or lawfully making the work available to the public. The exception involved technological processes and not economic use of the work or copy. Thus, the temporary copy could not have independent economic value.

Trademarks

1248. The representative of the Russian Federation noted that protection of trademarks and service marks was regulated by the provisions of Chapters 69 and 76 of the Civil Code. Chapter 76 "Rights to means of individualization of legal entities, goods, works, services, enterprises and information resources" included provisions concerning rights to a firm name, to a trademark and service mark, to a designation of the place of origin of goods, and to a commercial designation. In contrast to results of intellectual activity, means of individualization were assigned only for use in commercial circulation and were protected only in order to defend rights of entrepreneurs.

1249. He further noted that the rules of this Chapter stipulated that the grounds for exclusive rights for the firm name appeared with State Registration of the legal entity which owned that firm name. Direct prohibition on disposal of the exclusive right to a firm name including by means of its alienation or the granting of the right on disposal to another person on a basis of licence contract (Article 1474) represented an important change in the legal treatment of firm names. Chapter 76 also contained provisions concerning commercial designations, which in contrast to a firm name, individualizing a legal entity, individualized a manufacturing enterprise (shop, restaurant, factory etc.). In accordance with the Civil Code norms, a commercial designation might be used not only by commercial organizations, but also by non-commercial organizations, carrying out commercial activity as well as by individual entrepreneurs. Commercial designations were not required to be registered and were not subject to mandatory inclusion into the uniform State register of legal entities. Chapter 76 set-out general provisions on the scope of the exclusive right to a commercial designation and limitations for disposal of that right. The right to use a commercial designation could be granted to another person only with the enterprise which used it as an individualization (Article 1539). In his view, the provisions of Chapters 69 and 76 of the Civil Code conformed to the provisions of the Paris Convention and the relevant provisions of the WTO Agreement on TRIPS, including those which governed protection of well-known marks with respect to non-homogeneous goods.

1250. The representative of the Russian Federation explained that according to Article 1477.1 of the Civil Code, trademarks were intended to distinguish the goods of one producer from the goods of another producer by the following words: "indication serving the individualization of goods of legal persons or individual entrepreneurs". The concept of "likelihood of confusion" was reflected in Article 1483.6 of the Civil Code by means of prohibition of registration of trademarks "that were the same as, or similar to the point of confusion" with trademarks and other indications owned by other persons. The rights granted to the holder of exclusive rights to trademarks, were listed in detail in Article 1484.2 of the Civil Code. Article 1484.3 of the Civil Code prohibited use, without the permission of the right-holder, of indications that were similar to the trademark of the right-holder with respect to the goods for which the trademark was registered or goods of the same type, if as the result of such use a likelihood of confusion would arise. According to Article 1248.1 of the Civil Code, disputes connected with the protection of infringed or contested intellectual rights, including rights to trademarks (see also Article 1226 of the Civil Code), were to be considered and decided by a court. Dispute settlement procedures including provisions on the right of interested parties to provide their evidence on the issues in dispute were set-out in the procedural legislation of the legal system of the Russian Federation. The period for termination of protection based on non-use of the trademark (Article 1486.1 of the Civil Code) was in line with Article 19.1 of the WTO TRIPS Agreement.

1251. The representative of the Russian Federation also stated that the system of means of individualization prescribed by the Civil Code was to permit the individualization of different subjects and objects of economic turnover. The principle of "seniority" was stipulated by Article 1252.6 of the Civil Code and sufficiently secured interests of right-holder in respect of an earlier registered trademark. Moreover, Articles 1476 and 1541 of the Civil Code stipulated parity of rights to different means of individualization (commercial designation, firm name, trademark). It also provided precise provisions on the competences and interests of the respective right-holders.

1252. Some Members expressed concern regarding the provisions of the Civil Code granting parity of rights as between trademarks and domain names. They noted that these names were not recognised as intellectual property in the WTO TRIPS Agreement, or under other intellectual property Agreements. In these Members' view, the existence of a domain name that was not also a trademark could not provide a basis for denying recognition and protection of a trademark or service mark. Other Members expressed similar concerns that commercial designations and firm names do not provide a basis for denying recognition of a trademark or service mark.

1253. In response to these concerns, the representative of the Russian Federation confirmed that Article 1483.9 (3) of the Civil Code had been amended to exclude domain names. Thus a domain name, the rights to which arose before the priority date of a trademark or service mark application would not serve as a ground for refusal to register the trademark or service mark. The Working Party took note of this commitment.

1254. In response to some Members' concerns regarding firm names and commercial designations the rights to which arose in the Russian Federation before the priority date of the trade mark application, the representative of the Russian Federation explained that such firm names or commercial designations could be the ground for refusal to register a trade mark only with respect to goods of the same type and if the indication was the same as or similar to the point of confusion with the firm name or commercial designation. Thus, simple registration of a firm name or commercial designation would not be sufficient; likelihood of confusion would be necessary.

1255. In respect of well-known trademarks, the representative of the Russian Federation explained that Chapter 76 of the Civil Code included a definition of a well-known trademark, and provided for protection of well-known trademarks. The Civil Code did not require the registration of well-known trademarks. Any trademark claiming to be well-known would be recognised as such by a competent authority, i.e., Rospatent. In his view, this procedure for granting protection was fully consistent with Article 6bis of the Paris Convention. The provisions of criminal and civil legislation applicable to "ordinary" trademarks were also applicable to well-known trademarks. Among the remedies available against infringers were recognition of the right, prevention of infringement, compensation of losses, statutory compensation, and criminal and administrative liability.

1256. Some Members of the Working Party continued to have concerns regarding the requirement for well-known marks to apply for and be recognised by Rospatent as well known marks. Article 1508 of the Civil Code requires that in order to receive well-known mark protection, application must be made in a separate action before the Chamber of Patent Disputes of Rospatent, with the desired result being that the mark was then recognised and entered upon a list as being well known. They cited instances where marks recognised as well-known in many WTO Members, and which enjoyed a wide reputation in the relevant sector of the public in the Russian Federation, had been denied such recognition in the Russian Federation. In certain instances, an affirmative decision by the Chamber of Patent Disputes had been overturned, sua sponte, by the Director of Rospatent.

1257. The representative of the Russian Federation responded that contesting the registration or termination of a legal protection of trademark before the Chamber of Patent Disputes of Rospatent was a kind of preliminary consideration of disputes. It did not prevent interested parties from appealing the decision of Rospatent on the status of the mark to a court (Article 1248.2 of the Civil Code). In addition, Article 1248.1 provided for judicial consideration of disputes connected with the protection of infringed or contested intellectual property rights and cited paragraph 1 of Article 11 of the Civil Code. Moreover, there was a judicial practice in cases that provided protection to well-known trademarks of foreign right-holders against use by Russian infringers (for example, the decision of the Arbitrage Court of Moscow region on the case No. KA-A40/658-99 as of 17 March 1999).

1258. In accordance with the Russian legislation, an indication (sign) that was used as a trademark or registered trademark could be considered a well-known mark on the basis of decision of the Federal body responsible for intellectual property issues that was also a basis for including of the well-known trademark on the List of Well-Known Trademarks in the Russian Federation (hereafter: the List).

1259. The representative of the Russian Federation explained that, in his view, including a well-known trademark on the List was not similar to registration of trademark in the State Register of Trademarks and Service Marks of the Russian Federation (hereafter: the State Register). To register a trademark in the State Register one should have made an examination on its compliance with requirements stipulated by the Article 1483 of the Civil Code regarding trademarks. There was no need for such examination to consider the indication (sign) or registered trademark as a well-known trademark. A sign or registered trademark could be considered well-known in the Russian Federation if this sign or registered trademark, as the result of intensive use had become widely known in the Russian Federation among the corresponding consumers with respect to goods of this applicant on the certain date. The representative of the Russian Federation noted that Article 1484 of the Civil Code stated that the term "use" in respect of trademarks covered placement of the trademark on goods, including on labels and packaging of goods, that were produced, proposed for sale, sold, displayed at exhibits and fairs, or otherwise introduced into civil commerce on the territory of the Russian Federation, or were kept or transported for this purpose, or were imported on the territory of the Russian Federation. Use was also in the performance of work or rendering of services; exploitation of the mark in documentation connected with the introduction of goods into civil commerce, in proposals for the sale of goods, for performance of work, and for rendering of services, and also in announcements, on signs, and in advertising. Use could also be on the Internet, including in a domain name and for other means of addressing. The term "use" in Article 1508 of the Civil Code had the same meaning and, in his view, this definition covered the concept of promotion in the sense of Article 16 of the WTO TRIPS Agreement. The competent authority considered whether a mark had been used intensively taking into account, inter alia, advertising budget (proved by annual financial reports), degree of familiarity of the mark to customers, and the information on countries where the mark was well-known.

1260. The representative of the Russian Federation confirmed that the Civil Code did not contain any norms that fixed the links between granting legal protection to a trademark, which was considered well-known, and its inclusion on the List. Thus, if the owner of such a trademark sued for infringement of his mark, the Court would decide if the rights of the owner of the trademark were infringed independently of the fact of inclusion of this trademark on the List. The decision of the Court, however, would be limited in its effect to the specific case. The Working Party took note of this commitment.

Geographical Indications

1261. The representative of the Russian Federation stated that prior to 1992, designations of the place of origin of goods in the Russian Federation were protected by considering the use of false or misleading designations of the place of origin of goods as a form of unfair competition or a violation of consumer rights (this was enforced by antitrust (antimonopoly) agencies or courts respectively). Since 1992, designations of the place of origin of goods were accorded special protection under Law of the Russian Federation No. 3520-1 of 23 September 1992 "On Trademarks, Service Marks and Appellations of Origin". He further clarified that the term "designations of the place of origin of goods", although translated in different ways, would have the exact same meaning as the term "geographical indications" as defined under the WTO TRIPS Agreement once the Russian Federation amended Article 1516 of the Civil Code. From 1 January 2008 the protection of designations of the place of origin of goods was provided for under Section 3 of the Chapter 76 of the Civil Code, which prohibited registration of trademarks containing indications (signs) of the place of production of goods as well as trademarks containing false indications or indications which might mislead the customer as to the identity of the producer of goods. Protection of designations of the place of origin of goods was provided for all kinds of goods, such as food and manufactured goods, including handicrafts, alike.

1262. He further explained that the rules on legal protection of designations of the place of origin of goods were transmitted substantially to the Civil Code from Law of the Russian Federation No. 3520-1 of 23 September 1992 "On Trademarks, Service marks and Appellations of origins of goods" which thoroughly regulated these objects. The changes affected basically the wording and placement of certain articles in order to make the provisions on trademarks and designations of the place of origin of goods consistent with common provisions on protection of intellectual property rights. At the same time, the application of the reciprocity principle with respect to registration of designations of the place of origin of goods had been removed from the Civil Code and the possibility to appeal the grant of protection for designations of the place of origin of goods when the use of designations of the place of origin of goods could mislead the consumer regarding the good or its producer because of the existence of a trademark which was protected prior to the protection of the designations of the place of origin of goods (in accordance with Article 16 of the WTO TRIPS Agreement) was provided.

1263. Some Members of the Working Party noted that signs containing geographical elements could be distinctive and thus capable of distinguishing the goods and services of one undertaking from those of another undertaking. Such signs must be eligible for registration as a trademark. These Members expressed concern that the Civil Code did not adequately protect rights in trademarks with respect to registration of geographical indications that could be confusingly similar to the registered mark.

1264. The representative of the Russian Federation stated that the provisions ensuring the protection of designations of the place of origin of goods in the Russian Federation, in his view, complied with the Paris Convention and the relevant provisions of the WTO TRIPS Agreement. In Article 1252.6 of the Civil Code, which established the principle of "seniority" for a few identical or similar to the point of confusion means of individualizations, designations of the place of origin of goods were not mentioned. The representative of the Russian Federation further stated that the conditions of registration of designations of the place of origin of goods depended, in general, only on the fact that the goods produced in a particular locality had special characteristics and on the location of the producer of these goods in this locality (Article 1516.1 of the Civil Code). The provisions of the Civil Code would permit the holder of an earlier-in-time mark to object to the registration of a designation of the place of origin of goods, or request its removal from the register. Furthermore, registration would not be granted to a designation of the place of origin of goods, inter alia, where, in light of the reputation and renown of a trademark and the length of time it had been used, registration of the designation of the place of origin of goods was liable to mislead the consumer as to the true identity of the product and therefore to create a likelihood of confusion with an earlier-in-time trademark. He noted that a WTO dispute settlement panel found that a similar approach did not contradict provisions of Part III of the WTO TRIPS Agreement (see WT/DS174/R).

1265. Some Members of the Working Party expressed concerns considering that Article 1516 of the Civil Code limited the definition of designations of the place of origin of goods so that it did not comply with Article 22 of the WTO TRIPS Agreement.

1266. In response, the representative of the Russian Federation informed Members of the Working Party according to Article 1516.1 of the Civil Code that "traditional" designations may be granted protection in cases where they contain "a modern or historical, official or unofficial, full or abbreviated designation" of a country, city or rural settlement, locality, or other geographic locale and also a designation derived from such an indication and having become known as the result of its use with respect to goods the special characteristics of which were exclusively or mainly determined by the natural conditions and/or human factors characteristic for the given geographic locale. At the same time neither the WTO TRIPS Agreement, nor the Lisbon Agreement stipulated directly unconditional protection of any "traditional" designation. The definition of designation of the place of origin of goods to which legal protection was granted (Article 1516.1 of the Civil Code) included the condition that the designation was to be known as the result of its use. Thus if "known" was understood as an abstract characteristic, as the result of its particular characteristics, the respective designation certainly would be granted legal protection. Article 1516.1 of the Civil Code also provided for the protection of "traditional indications" within the institute of "designation of the place of origin of goods" at any rate if "historical designation" of the respective place of origin was understood within the meaning of "traditional indication". He further noted that requiring a Member to protect all "indirect indications" as a "designation of the place of origin of goods" in his view did not follow directly from the substance of Article 22.1 of the WTO TRIPS Agreement.