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Enforcement of IPRs in Russia


Enforcement of IPRs
Geo-political locations and neighbouring countries like China are the causes of counterfeiting and piracy in Russia. Also, the counterfeit goods are available at cheaper prices.
Apparel (including sportswear), footwear, alcohol and non-alcoholic beverages, tobacco, perfumery, cosmetics, food, and car replacement spare parts are the goods that most often face counterfeiting and piracy in Russia.
  • The Part IV of the Civil Code (230-FZ, December 18 2006);
  • The Criminal Code (63-FZ, June 13 1996);
  • The Code of Administrative Offences (195-FZ, December 30 2001); and
  • The Law on the Protection of Competition (135-FZ, July 26 2006).
Patents (including for inventions and utility models), trademarks (including service marks), copyright (including computer programmes and databases) and related rights, design rights (that are industrial designs), know-how (that is trade secrets or confidential information), mask works (including layout-designs), achievements of selection (including plant varieties and animal breeds).
In a case involving the infringement of exclusive rights to intellectual property, to increase the chance of success, collecting relevant evidence ahead of time is vital, since in Russia there is no such procedure as disclosure or discovery like in some other jurisdictions. Furthermore, for obtaining trademark protection in Russia, a trademark application must be filed with the RUPTO. However, as Russia is a signatory to the WIPO Madrid Agreement Concerning the International Registration of Marks 1891 (Madrid Agreement) and the Madrid Agreement concerning the International Registration of Marks and the Protocol Relating to that Agreement 2004 (Madrid Protocol), international trade mark registrations can also be protected in Russia. An unregistered mark, or mark-in-use, is not protected, unless it has obtained a “well-known” status through registration with the RUPTO.
There are some cases, which are required to be administered through pre-trial procedures first before resorting to civil/criminal course of action through other courts. The same should be checked before filing a suit. Also, the preparation of the case for trial should be completed within 02 months from the date of filing the statements of claim with the court.
A) Government Authorities - Yes
B) Police Officials - Yes
C) Judiciary - Yes
D) Customs - Yes
A) Injunctions - Yes
B) Monetary Compensation - Yes
C) Raids - Yes
D) Seizures - Yes
E) Destruction - Yes
Warning letters can also be used in Russia.
The initial proceeding’s timeline is about 06 months to 01 year. The procedure thereafter can take longer.
A) Responsible Authority - Commercial Courts, IP Courts
B) Imprisonment Term - Trademarks: up to 02 years, but where the infringer is acting in concert, it may be up to 05 years.
C) Monetary Fine - Trademarks: fine of up to RUB200, 000 or for an amount equivalent to the wage/salary or other income of the convicted person for a period of up to 18 months; however, when the infringers are acting in concert, there may be a fine from RUB100,000 to RUB300,000; For Patents and Copyright: RUB 10,000 - 5milllion.
Other criminal remedies in Russia include obligatory labour for up to 480 hours or compulsory labour for up to 02 years (05 years for infringers acting in concert) (Article 147, Criminal Code of the Russian Federation).
Alternative dispute resolution procedures are admissible for IP disputes. For example, IP owners can settle a dispute through the mediation procedure. In accordance with the law, the mediation procedure is applicable on the basis of an agreement between the parties, including a reference in the contract to a document containing conditions for the settlement of the dispute with the assistance of a mediator.
In addition to mediation, IP disputes can be transferred by parties on the basis of an arbitration agreement to arbitration. Despite the fact that the alternative methods of resolving disputes have some advantages, for example, confidentiality of the information involved, in practice these methods are not frequently used by IP owners in Russia.
Remedies available under border control measures in Russia include the suspension of goods for import and export. A judicial proceeding can be initiated for after proceedings.
The IP rights holder/applicant must bear the costs of customs intervention during enforcement.
The goods are released for commercial exploitation if the compliance to the procedure is not attended to.
Judicial proceeding is preferable than simple custom or administrative practices.