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.
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.
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 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.
Which Russian IP rights are covered by the notion “means of individualization”?
In Russian law, all IP rights are divided into two large groups:
Means of individualization include:
Means of individualization serve to differentiate a business or its goods or services and are subject to legal protection on a par with results of intellectual activity. Specific features of legal protection provided to each IP right are regulated by separate sections in the Russian Civil Code.
Is forum shopping available in patent/trademark litigation in Russia?
For most disputes related to patent invalidation/trademark cancellation, the venue is determined directly by Russian law. It is either the Federal executive authority in the sphere of intellectual property (Rospatent, the Chamber for Patent Disputes) or the Court for Intellectual Property Rights.
At the same time, in infringement lawsuits, forum shopping is possible when the claimant can name multiple persons as co-defendants (e.g., manufacturer/importer, wholesalers, and retailers). In such cases, the claimant has the option to choose with which territorial court to file their action.
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