Nov 1, 2024
Case law on trade mark infringement on marketplaces
Our intellectual property practice deals with hundreds of cases of trademark infringement. We have decided to summarise the positions of arbitration courts on the main issues of claiming damages under Article 1515 of the Civil Code of the Russian Federation, which allows to claim compensation in any amount between 10,000 roubles and 5 million roubles or twice the value of the counterfeit goods on which the trademark was illegally affixed, instead of damages.
The Main Theses Confirmed by Court Practice:
- Courts tend to award damages in the amount of twice the value of the counterfeit goods;
- in cases where they reduce damages, they are not entitled to reduce them below twice the value of the counterfeit goods;
- Courts will take into account not only the value of the goods actually sold, but also the value of the goods offered for sale (e.g. in a shopping basket in a marketplace);
- Repeat offences and the duration of the offence, as well as systematic trafficking in counterfeit goods in general, are de facto considered as aggravating circumstances;
- Courts are prepared to require evidence of the quantity of goods offered and sold on marketplaces;
- Screenshots and evidence collection logs from systems such as WebJustice are accepted as admissible evidence by the courts;
- Data from marketplace analysis systems - MF Stats, Mayak - are considered admissible evidence by the courts;
- in the case of self-employed persons, claims are submitted to an arbitration court and not to a court of general jurisdiction;
- Claims may be filed by e-mail as indicated in the Unified State Register of Legal Entities/EGRIP - this is the same as the pre-litigation procedure;
- An individual entrepreneur must check the goods for counterfeits.
The presentation can be downloaded from the following link.
Anton Shamatonov
Maya Markelova