Russian Federation: requirement to send a letter of formal notice prior to legal action

A novelty in the field of Russian intellectual property law: as of June 1st, 2016, an applicant for an infringement action is required to submit a letter of formal notice to the defendant and wait 30 days before initiating legal proceedings. Thus, an infringement action must always begin with an attempt to resolve the dispute amicably.

The requirement applies to civil cases except for a limited number of instances such as for example, cancellation actions on the grounds of non-use.

Prior to this amendment, sending a letter of formal notice before filing an infringement claim was optional. As of June 1st however, if an applicant files an infringement claim before a judge without having submitted a letter of formal notice, or if the applicant fails to wait 30 days after the issuance of such a notice, the action will be considered inadmissible.

The reform implies a development in the  evidence to be produced by the parties during proceedings. Indeed, the parties will have to produce evidence of their amicable discussions in court. It is also worth noting that following the wording of the law, the applicant will most likely have to enclose a copy of the accompanying letter sent by registered mail, in order to confirm that the letter of formal notice was actually sent.

The new legislation does not require the applicant to produce evidence that the defendant has received the letter. However, in practice, we can expect that in order to delay the proceedings, the defendant will argue that he/she did not receive the formal notice. In such a case, the defendant would not have had the opportunity to remedy the infringement prior to any proceedings and the out-of-court phase would not been complied with.

This reform necessarily implies changes in the trademarks and domain name defence strategy in the Russian Federation.

It will be interesting to follow the case law pertaining to these novelties and their implementation.

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