Trademark Enforcement in Russia

Trademark unlawful use disputes comprise a significant part of cases related to the protection of trademark rights.

Proof of infringement

A dispute about an infringement of IP rights to a trademark requires that the following legal facts be proven:

  • use of the designation by the defendant;
  • identity or confusing similarity of the designation used to the registered mark;
  • use of the designation in relation to goods and services for which the rights holder’s trademark is registered; and
  • lack of permission of the rights holder to use the similar designation.

With regard to the similarity of the used designation and the registered trademark, the perception of consumers plays a key role. Consumers can be misled as a result of the identity and similarity of the means of individualization of products (services).

The main criteria for determining the similarity of signs and the definition of homogeneous goods are fixed in the “Methodological recommendations for determining the homogeneity of goods and services in the examination of applications for state registration of trademarks and service marks.”

How to enforce TM rights

If there is evidence of an infringement of IP rights to a trademark, the issue can be resolved either in a pretrial procedure (sending a claim to the infringer) or in court in the framework of administrative (Article 14.10 of the Code of Administrative Offenses), civil (Paragraph 3 of Article 1229 (1) of the Civil Code of the Russian Federation), or criminal law (Article 180 of the Criminal Code) procedures.

According to Russian law, a lawsuit related to unauthorized trademark use is to be filed with a local arbitration court. The court’s decision is appealable in the same locality to the appeal court, whose ruling can be further appealed to the Intellectual Property Court as a cassation instance.

In cases where an infringement of IP rights to a trademark is recognized as unfair competition, protection of the infringed IP rights may be carried out both by the remedies provided for in the Civil Code of the Russian Federation and in accordance with antitrust laws (the Russian Federal Law of July 26, 2006, No. 135-FZ, “On Protection of Competition”).

Available remedies

The rights holder may demand the following from the infringer:

  • damages; or
  • compensation payments in the following amounts:
    • from ten thousand to five million rubles, determined at the discretion of the court based on the nature of the infringement,
    • double the value of the goods on which the trademark is illegally placed, or
    • double the value of the right to use a trademark, determined on the basis of the price, which is usually charged for the legitimate use of a trademark under comparable circumstances.

Sojuzpatent has broad experience in all aspects of trademark enforcement, representing both claimants and defendants in various cases every year. On many occasions, we assist clients in settling disputes without litigation.

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