PAG LLC v. Sony: Decision of the Constitutional Court 13 February 2018 – Case No. C-419/13

• Published in: IIC - International Review of Intellectual Property and Competition Law 2018-10, Vol.49 (8), p.1004-1014
• Main Authors: “PAG” LLC v. Sony Corporation Civil Code of the Russian Federation, Arts. 1252 para. 4, 1487, 1515 paras. 1 and 2, Agreement on the Eurasian Economic Union, Annex No. 26
• Format: Article
• Language: English
• Subjects: Decision • Trade Mark Law; Intellectual Property; IT Law; Law; Law and Criminology; Media Law
• ISSN: 0018-9855; 2195-0237
• DOI: 10.1007/s40319-018-0737-8

The national principle of exhaustion of exclusive trademark rights applies in combination with the principle of exhaustion of rights as regulated by international agreements, to which the Russian Federation is a party. A court may deny in full or in part the ordering of legal measures countering the importation into the territory of the Russian Federation without the consent of the trademark right holder of a specific quantity of goods, on which the trademark is affixed by the right holder himself or with his consent and which were legally put into circulation outside of the borders of the Russian Federation, in the cases, when due to the trademark right holder’s unfair conduct the application upon his request of such legal consequences may create a threat upon the citizen’s life and health, and other publicly significant interests. Moreover the observance by the trademark right holder of a regime of sanctions against the Russian Federation, which was adopted by any other State outside of the predetermined international legal procedure and in violation of multilateral international agreements, to which the Russian Federation is party, expressed in the attitude adopted by the right holder towards the Russian market, may be in itself considered as unfair behaviour. It is not envisaged to order against the importation into the territory of the Russian Federation without the consent of the trademark right holder of a quantity of goods on which the trademark is affixed by the right holder or with his consent, civil liability measures that are identical in terms of volume (gravity of the outcome) to those countering the importation of fake goods, unless in the circumstances of a specific dispute it leads to losses for the right holder, comparable to the losses suffered from the introduction in circulation of fake goods. Goods, bearing a trademark affixed by the right holder himself or with his consent, introduced into the territory of the Russian Federation without the consent of the right holder, may be removed from circulation and destroyed pursuant to the remedies countering the infringement of an exclusive trademark right only in the event of their inadequate quality and (or) in order to ensure safety, protection of people’s lives and health, nature and cultural property.