Pre-judicial procedure to become mandatory

A new bill seeking to introduce pre-judicial procedures before initiating a court action has been signed into law and will come into force on June 1 2016. Some pre-judicial measures already exist. The Commercial Procedure Code states that, among other documents, the court claims should include information on observance of the pre-judicial procedures by the plaintiff if it is required by law or by contract. The existing provisions requiring the pre-judicial settlement of disputes are scattered across a number of laws, including the Commercial Procedure Code, the Tax Code and the Code of Administrative Offences. However, the provisions concern specific situations occurring in business and in day-to-day life. No such provisions exist in respect of IP disputes.

In practice, rights holders have long found it useful to send a warning letter to the infringer when they discover that their rights have been infringed. Although not obligatory, sending a warning letter allows the rights holder to find out what the infringer is up to. This measure is cheap and in many cases allows the rights holder to stop the infringement at its inception. Many infringers stop their illegal activities after receiving a letter from a law firm (but less often if the cease and desist letter is sent by the rights holder itself). If the warning letter is ignored or refuted by the infringer, the rights holder knows that it should prepare itself to attack. In all cases, even before sending a warning letter the rights holder should properly document the infringement: make a test purchase, organise notarial attestation of the infringement and secure any other evidence. Every instance of infringement is individual and may require individually tailored measures to collect evidence of infringement.  

Thus, the new law is not expected to change anti-infringement strategies dramatically. Only in some specific cases may a warning letter reveal the intentions of the rights holder and thus unnecessarily warn the infringer of the forthcoming attack.

This is an Insight article, written by a selected partner as part of IAM's co-published content. Read more on Insight

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