Most counterfeits on the Russian market (especially consumer goods) are not manufactured locally, but are imported from neighboring countries; therefore, the inflow of infringing articles via the customs border represents a noticeable problem for owners of Russian-registered brands.
Preventing counterfeits from crossing the customs border is an important function of the Federal Customs Service (FCS), the state agency responsible for exercising control over international commercial exchange (exports and imports).
At present, customs activities are regulated by the Customs Code of the Eurasian Economic Union (EAEU) (the five countries comprising the EAEU, namely Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia, have a common customs territory) and by each county’s national legislation. In Russia, the FCS can detain potentially infringing goods ex-officio for 7 calendar days in order to give the rights holder the possibility to check out the goods and either confirm that the referred goods do not infringe the brand owner’s rights, or file an application with the authorities to initiate an administrative procedure. If such a procedure is initiated, the goods are seized and a lawsuit is brought to court. Further to the customs seizure, the court, if it finds an infringement, may impose a fine on the importer and order that the counterfeit goods be confiscated (and destroyed).
In the course of their activities, customs detains many suspicious shipments. For example, a shipment of poor quality merchandise marked with a renowned luxury brand is likely to be stopped in most cases. However, with the large volume of goods imported into Russia, it is improbable that every article marked with a particular trademark will attract due attention and be checked. Moreover, the customs authorities never perform more than one ex-officio detention for the same trademark. A good way to ensure that all suspect shipments receive due attention and are inspected is to record the trademark on the Customs Register of Intellectual Property Rights.
For a brand owner, the Customs Register is an important tool to prevent infringing articles from entering Russian territory. After the recordation of a trademark with customs, the information is uploaded to the national FCS database and becomes available at all customs stations. Customs officers then have some additional criteria for detaining goods marked with the trademark (for example, if the importer is not included in the list of authorized importers and does not have the rights holder’s permission). The rights holder is informed immediately in accordance with the recorded contact details and has 10 days to study the materials (including photos of the imported goods).
The advantages of recording your trademark with customs are the following:
It is worth knowing that not only trademarks, but also copyrights can be recorded on the Register. However, the vast majority of recorded rights are trademarks.
Not only do we perform for our customers all work related to IP rights recordals on the Customs Register, we also serve as a contact point between the rights holder and the Customs Authorities during the whole term of recordation.
Can a light be registered as a trademark in Russia?
In the Russian Federation, a light designation can be registered as a trademark.
If a light is applied for registration as a trademark in Russia, it will be necessary to provide a description of the light symbols, their sequence, duration of lighting, and some other features.
Who can sign a power of attorney to be submitted to the RUPTO, EAPO, Russian courts?
The signer does not have to hold any specific position or to be an executive of a certain rank. However, his or her position should be clearly indicated in the PoA. The signer should be duly authorized to act on behalf of the company, not just assigned to oversee certain cases. It is normally requested that the documents that empower the signer be mentioned in the text of the power of attorney. If the signer deals on the basis of a proxy, the powers of the person who has signed the proxy may also be checked. It is highly advisable that all the corporate titles coincide in different documents. For example, if the proxy is signed by the Chairman of the Board of Directors and the official title of the person who can sign according to the bylaws is Director, the respective Court may not accept the documents without requesting further clarifications.
What compensation can a trademark owner claim from the infringer for the breach of intellectual property rights?
The trademark owner can choose to claim from the infringer damages or a compensation payment in an amount ranging from RUR 10,000 to 5,000,000 (the specific amount is to be determined by the court based on the infringement circumstances), or compensation in an amount equaling double the price of the goods illegally bearing the trademark, or compensation in an amount equaling double the cost of the right to use the trademark to be determined based on the cost of rightful use of the trademark normally applicable in comparable circumstances.
In what way does a trademark differs from a trade name, a logo, or a brand? What does registration result in – a trademark, a logo, or a brand?
The words “brand”, “logo”, “label”, etc. are colloquial terms often used as synonyms for a trademark (service mark). Russian law instead uses only one legal definition – trademark (service mark). Thus, the registration of a designation with the patent office results in a trademark.
A trademark (service mark) is a designation used for individualization of goods (or services) of business entities or individual entrepreneurs, the IP rights to which belong to the trademark owner and are evidenced by a trademark certificate. In Russia trademarks can not be initially registered in the name of natural persons (individuals).
Trademarks can be in the form of a word, design, combination, three-dimensional shapes, sound marks etc. The owner of the trademark can indicate that it is registered and protected in Russia by placing one of these designations
next to the trademark:
“R”, ®, “trademark”, “registered trademark”.
Without the trademark owner's permission, nobody shall use designations which are identical to the trademark or designations that are similar to the trademark, in respect of the goods for individualization of which the trademark is registered, or homogenous goods, if such use may result in confusion of customers.
Do foreign applicants need a Russian trademark attorney?
It is mandatory according to Russian legislation that foreign applicants be represented before Rospatent (the RUPTO) by a Russian patent (trademark) attorney who is listed in the Russian Register of Patent Attorneys.
To be successfully guided through the intricacies of national regulation and to ensure the needed scope of protection, it is important for the applicant to retain an experienced attorney.
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