Other rules for dividing intellectual property

The bill plans to establish that in a situation where one of the “co-authors-patent holders” expresses a desire to terminate the patent early, but the others do not agree with him, the initiator can himself renounce the exclusive right – his share will be transferred free of charge to the remaining copyright holders in proportion to their shares. In this case, the “co-author” who has “renounced” the exclusive right will not participate in the costs of maintaining the patent in force, but will retain the right to use the patented solution free of charge, however, without expanding the scope of such use.

At the same time, the parliamentary draft also regulates the issues of foreclosure on intellectual property – the creditor will be able to demand the allocation of the copyright holder’s share or its alienation in favor of the remaining co-authors at a price commensurate with its market value, and use the proceeds to pay off the debt. If none of the co-owners buys the share, the creditor may legally demand its sale at public auction.

The issue of the admissibility of joint ownership of rights to a trademark is being resolved separately – the Civil Code does not prohibit this, but, as noted in the explanatory note, “judicial practice is emerging” that does not recognize this as admissible. The bill provides for the possibility of allocating shares in the exclusive rights to a trademark, but with restrictions that are so far spelled out very generally: joint ownership, allotment of shares and use by each of the rights holders of the trademark at its own discretion should not be allowed if “this may cause misleading consumers regarding the product or its manufacturer.” The government also warns about the risks in this part: since a trademark is a means of individualizing goods, the possibility of allocating shares in the right to it requires additional elaboration due to the fact that an increase in the number of copyright holders using the trademark “creates a risk of loss of trust.”

As Anastasia Snopkova, a lawyer in the practice of intellectual property and technology at BGP Litigation, notes, the issue of joint ownership of trademark rights often becomes the subject of litigation – and the proposed innovations correspond to “global trends.” Thus, she explains, foreign legislation provides such an opportunity – as a result, in practice, a situation arises where the copyright holders of international trademarks extend protection to Russia and receive this opportunity, while the copyright holders of Russian trademarks are still deprived of it.

Evgenia Kryuchkova