Is Custom Recordal of Intellectual Property Rights (IPRs) available in Russia?
Is Custom Recordal of IPRs compulsory in Russia?
Is it an effective measure to stop the infiltration of illegal and counterfeit products in Russia?
Which law forms the legal basis for Custom Recordal of IPRs (Border Control Measures) in Russia?
The Federal Law on Customs Regulation in the Russian Federation and Amendment of Specific Regulations of the Russian Federation, published in August 2018 forms the legal basis for Custom Recordal of IPRs (Border Control Measures) in Russia.
Is Custom Recordal of IPRs effective on import or export of goods or both?
Custom Recordal of IPRs is effective on both the import and export of goods.
What is the role of the customs department/authority? (Kindly give 2-3 points)
They supervise goods from imports and exports. They also carry out administrative responsibilities of informing the IP rights holder by sending an official notice of suspension along with presenting facts and pictures. They only look over the copyright and trademark-infringing goods, but not patents as they require involvement of the police authorities.
Is there a procedure to record IP with the customs department/authority? If yes, then kindly explain it in brief.
A certain number of documents have to be deposited with the Customs registry along with the Agreement of insurance of the liability risk for causing damage in favour of indicated persons. Within 01 month, the Federal Custom Services accepts or rejects the request so made. The information on the intellectual property objects recorded with the Customs register is forwarded to all customs authorities of the Russian Federation. The entire procedure shall not take more than 03 months.
What documents are to be submitted along with the application for Custom Recordal of IPRs?
They are as follows:
A Power of Attorney (in case a request is filed by a representative);
A document confirming the validity of the intellectual property object (for instance, a copy of the certificate or statement from FIIP);
A detailed description of the intellectual property object and original goods;
Samples or images of original goods;
Documents confirming that original goods have been put into the civil circulation on the territory of the Russian Federation;
License agreements or other agreements in force;
Description and samples/images of infringing goods (if there is any information on infringement);
A written obligation of the applicant to cover all expenses of customs authorities and damage caused to the owner of suspended goods in case the infringement has not been confirmed; and
A copy of civil liability insurance to cover damages.
Is the applicant required to execute a bond (against all liabilities and to bear the costs towards destruction, demurrage, and detention charges incurred till the time of destruction or disposal) with the customs department/authority for Custom Recordal of IPRs?
No, but some money has to be paid along with the Agreement of Insurance.
What is the time frame for the customs department/authority to notify the applicants whether their application (for custom recordal of IPRs) is registered or rejected?
Does the customs department/authority have a centralized system or the Custom Recordal is required to be done with each port of entry in Russia by land, sea, and air?
The customs authority has a centralized system. The owner of an intellectual property object or a person acting on behalf of the owner within the scope of granted powers (for instance, a licensee) is entitled to file an application to the Federal Customs Service requesting customs recordation of a corresponding intellectual property object if there is evidence that the owner's rights may be infringed by import/export of goods into the Russian Federation or during other actions concerning the goods under customs control.
Is there an online system for Custom Recordal in Russia?
Yes, but it will be made available later in 2021.
What is the official fee for Custom Recordal in Russia?
There is no such fee.
What is the term of Custom Recordal of IPRs? Can it be further renewed?
The object may be recorded with the Customs register for the term of 03 years with a possibility of further extension for an unlimited number of times within the validity term of the rights on the corresponding intellectual property object.
Does the customs department/authority have a right to conduct raids and seize the counterfeit goods within Russia?
In which scenario does the customs department/authority suspend the clearance of imported goods?
If a customs officer suspects the authenticity of the goods received for clearance, their customs clearance is suspended for up to 10 business days and the goods are moved to temporary storage. This period may be increased to 20 working days for additional examination. The IP rights owner (or a representative) must receive a notification about this within one day. Based on the results of the consideration of the issue of intellectual property, in court or out of court procedure, the goods may be sent for further clearance, arrest, or confiscation.
Who bears the liabilities and expenses related to suspension of the release of infringing goods?
The applicant/rights holder bears the liabilities and expenses related to suspension of the release of infringing goods.
Is the IP rights holder authorized to examine the goods, the clearance of which has been suspended?
Is the IP rights holder authorized to request the information about the personal details of the importer and additional crucial piece of information concerning the consignment, which has been suspended from clearance?
Can the importer or the authorized representative of the goods, which have been suspended from clearance, request the information of the IP rights holder in question?
Within what timeframe the IP rights holder needs to confirm whether the goods are counterfeit or original after suspension?
Upon examination, in a case of counterfeit goods the rights holder may, within the term of detention (20 days) initiate administrative, civil, or criminal proceedings to bring the infringer to responsibility.
Is the IP rights holder required to produce an injunction order or evidence of court proceedings to detain the goods?
If the answer to the above question is 'Yes,' then what is the deadline to do so?
Does the IP rights holder need to pay an additional bond for the detention of goods?
If the answer to the above question is 'Yes,' then to what extent and how is the valuation calculated?
There is no such bond, but mount of ensuring the obligation or the amount of insurance should not be less than Rb500,000 ($7,800).
In the scenario where the goods detained or seized are found to be infringing the IPRs of the IP rights holder in question, what steps does the customs department/authority take?
The same is informed to the IP rights holder accompanying the evidence in the form of pictures, etc. In the event of infringement, according to the Code on Administrative Offences, the rights holder may approach the Customs with an application for action so that the latter can initiate administrative proceedings and sue the infringer in court. Another enforcement option for the rights holder is a civil action, whereby he can seek damages or monetary compensation and publication of the judgment. Failure to initiate legal action will result in the goods being released.
Does the customs authority invite the rights holder and importer to join the proceedings? Are there any consequences of failure to join such proceeding, if any?
The option is made available to the IP rights holder to file for a suit in the court of law.
Before disposal/destruction of infringing goods, does the rights holder need to submit a ‘no objection’ or concurrence document?
Are there any disadvantages of Custom Recordal of IPRs in Russia? If yes, then kindly give 2-3 points?
The disadvantage lies in the fact that the customs are not given wide powers to act against counterfeits. One has to initiate a civil proceeding to avail all the needed remedies.
If an IP rights holder is not satisfied with the action taken by the customs department/authority, can he/she initiate separate legal proceedings to enforce his/her IP rights?
To establish if the goods are counterfeit before the court of justice, will the affidavit by the IP rights holder suffice or any other documentary requirement is there?
Upon conclusion of proceedings before the Court of Justice, what are the possible remedies awarded by the court?
The court can reward, civil, administrative as well as criminal remedies, which include seizure and destruction of good, cessation of the infringement; damages or monetary compensation; removal from the market and destruction of counterfeit goods, labels and packages bearing unlawfully used trademarks or confusingly similar designations, as well as manufacturing equipment and materials used for the production of counterfeit goods; and publication of a court judgment in order to redress the damage to the rights holder’s reputation.
Is the rights holder under an obligation to inform customs authority when his Intellectual Property Right ceases to be valid/ he ceases to be the owner of such IPR?
Yes; also in the event of any changes made to the information submitted on the trademark/copyright, the customs shall be informed within 05 days.