Boundaries of judicial discretion in the application of intellectual property rights protection methods

Abstract

The article examines the international and national legislative framework, court practice, and scientific approaches to judicial discretion in the field of application of intellectual property rights protection methods. It is proved that the extension of the court's right to determine an effective remedy is consistent with the Constitution of Ukraine and the Convention for the Protection of Human Rights and Fundamental Freedoms. The author concludes that under the current procedural law, the method of defence that a court may apply in resolving a case is chosen by the plaintiff, so the court is deprived of the opportunity to choose or change the method of defence of the plaintiff's rights at its own discretion, contrary to the plaintiff's will. Also, the court cannot dismiss a claim due to the absence of a specific remedy in the law. The court has no right to go beyond the claims to determine an effective way to protect the right instead of the plaintiff. It is the plaintiff who is obliged to set out in the statement of claim the circumstances by which he justifies his claims, to provide evidence confirming these circumstances, as well as to indicate the legal grounds for the claim, and the court, while maintaining objectivity and impartiality, must provide the correct legal qualification of the relations between the parties based on the facts established during the consideration of the case.
The article analyses the court practice on protection of intellectual property rights regarding the use of effective remedies by courts and shows that some courts continue to assess remedies in terms of their enshrining in legislation. At the same time, the issue of the effectiveness of the remedy is raised separately.
The author proves that determination by the court of a remedy which is not provided for by law or contract depends, firstly, on the plaintiff's proof of ineffectiveness of the remedy provided for by law or contract, secondly, on the plaintiff's claim for application of another–effective remedy, thirdly, on non-contradiction of such remedy to law, and fourthly, on the court's recognition of the remedy declared by the plaintiff as effective.