Special Knowledge and Forensic Examination as a Procedural Safeguard of Intellectual Property Rights Protection

Abstract

Forensic examination is an important procedural safeguard for the protection of infringed intellectual rights in cases where the use of special knowledge is necessary to resolve a dispute, and at the same time it should not be considered as a procedural safeguard and a means of protection in cases where special knowledge is not required to establish the fact of the use of an object of intellectual rights. At the legislative level, there is no legal regulation of the issue of the need for special knowledge to establish the fact of the use of an object of intellectual rights in disputes about their infringement, it is not complete at the level of clarifications of the Supreme Arbitration Court of the Russian Federation and the Supreme Court of the Russian Federation, in some aspects it differs from the long-established Rospatent approaches and, therefore, it needs clarification. Due to the similar legal nature of industrial designs, trademarks (service marks) and copyright objects of a visual nature, the paper proposes to clarify and apply uniformly an approach by virtue of which special knowledge is not required but the perception of a narrow circle of buyers/users of the relevant goods/services may be used to assess their identity or similarity, general visual impression and derivative. In such cases, both the conclusion of a forensic examination and non-judicial expert opinions should not be treated as admissible evidence. In other cases, when special knowledge is necessary, it is proposed to consider only those conclusions of forensic examination and extra-judicial examinations that were carried out by persons qualified not only in the field of protection, examination and evaluation of intellectual property rights, but also in the field to which the object under study belongs. Such examinations can also be of a complex nature.