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.
What are the usual reasons for a trademark registration refusal in Russia?
Apart from so-called relative grounds for refusal (likelihood of confusion with other rights protected in Russia), there are four basic (absolute) grounds for rejecting a trademark application, namely:
The most relevant and often used reasons for objecting to an application are that the trademark at issue lacks distinctiveness or is misleading.
If my Russian trademark is illegally used in a domain name, do I have recourse to UDRP procedures in order to transfer the disputed domain name without litigation?
If the domain name is registered in one of the following generic Top-Level Domains (gTLDs): .com, .info, .net, .org, .biz, .name, .pro, .aero, .asia, .cat, .coop, .jobs, .mobi, .museum, .tel, .travel or in a new gTLD, your dispute may be resolved out of court on the base of the Uniform Domain-Name Dispute Resolution Policy (UDRP).
However, UDRP or similar dispute resolution proceedings are not currently available for .ru domains. In such cases, there are no options apart from litigation in court if the administrator does not concede to the trademark holder’s demand.
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.
Should I send a warning letter before filing a trademark infringement lawsuit in Russia?
According to Russian IP legislation, in commercial disputes on IP rights infringements, a warning letter (cease-and-desist letter or CDL) is obligatory and should be forwarded to the infringer before filing the lawsuit in case the right owner desires to claim damages or compensation.
The lawsuit can be filed if the infringer fails to satisfy the claims contained in the warning letter within thirty days after its dispatch.
Can a single color be registered in Russia as a trademark?
A color can be registered in the Russian Federation as a trademark if it is proved that the color has acquired distinctiveness through extensive use and the color is associated by customers with the applicant.
We have nearly a century’s experience,
guaranteeing you the highest quality service.
We have ample specialists in all areas of science and technology,
allowing us to resolve even your most complex challenges.
Our patent attorneys and litigation lawyers work in tandem
to provide you with the best-quality patents and to represent you successfully both in legal and in administrative disputes.
We provide an electronic interface to the patent offices
with fully automated workflow to eliminate multiple data entry and avoid errors.
Proximity to the customer, both geographic and electronic.
We have offices in the center of Moscow and in other major Russian cities. You can also access us remotely from anyplace in the world.
International IP publications rate us among the most prestigious world leaders
in the area of Intellectual Property.
Transparent reporting and detailed invoicing
provide you with complete information on our services.
Our professional liability is insured
by one of the world’s leading insurance companies.