Home / Doing business in Russia 2020 / Intellectual property / Intellectual property rights infringements
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  10. Intellectual property
    1. General approach
    2. Contractual aspects of intellectual property rights
    3. Rights over the results of intellectual activity
    4. Company names, trade names, trademarks and appellations of origin
    5. Intellectual property rights infringements
    6. IP Court
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Intellectual property rights infringements

Situation in Russia

Background

Counterfeiting and piracy are difficult to quantify in general, and this is especially true in Russia. They affect all areas of the Russian economy, including: consumer products, automotive, pharmaceuticals, etc. Counterfeit and pirated products are mainly distributed through “open-air” markets and online shops, although they may often be found in reputable department stores.

Recognising the magnitude of the problem and its potential impact on consumers’ health and well-being (especially with regard to pharmaceuticals), Russia has demonstrated a willingness to fight counterfeiting and to ensure the compliance of its laws and enforcement mechanisms with international standards.

Protection through customs

When counterfeit or pirated goods are imported to Russia, Russian customs officers can assist right owners in stopping the infringement of their intellectual property rights provided the right owners applied to have the relevant rights entered into a special Customs Intellectual Property Register. Customs officials can also in some cases take action on their own initiative by virtue of their status. The powers of customs officials are limited to copyrights and trademark rights (they do not cover inventions, utility models or designs). The maximum protection period for registered rights is two years, renewable at the request of the right owner.

Issue of parallel imports

Parallel importation is considered as a trademark infringement in Russia, although recent trends in the court practice and relevant legislative initiatives are controversial in this respect.

Since the spring of 2015, the Russian authorities have been pushing for parallel imports to be allowed, at least in relation to certain types of goods (such as pharmaceuticals, medical devices, automotive parts, cosmetics, perfumes, alcoholic beverages (except beer) and hygiene products).

In 2017, the Eurasian Intergovernmental Council was provisionally authorised by the Eurasian Economic Council to allow parallel imports of certain goods. The authorisation is, however, subject to the unanimous agreement of all the members of the Eurasian Economic Union and to date, no such agreement has been reached.

In 2018, the Russian Constitutional Court decided that parallel importation may be allowed if the trademark owner follows unfair practices such as price regulation or restriction of competition. 

Such an approach was also set forth in Resolution No. 10 “On Applying Part Four of the Russian Civil Code” issued in April 2019 by the Plenum of the Russian Supreme Court.

Liability

Russian legislation provides for civil, administrative and criminal liability for the infringement of intellectual property rights. The sanctions depend on the amount of the counterfeit goods involved and on whether the individuals or legal entities involved are repeat offenders.

Civil penalties

The civil law route entitles the trademark owner to file a claim in court for the:

  • termination of the infringement;
  • seizure/destruction of the counterfeit goods (or removal of counterfeit signs or labels); and
  • payment of compensatory damages or statutory liquidated damages (in an amount of RUB 10,000 - 5m (i.e. from EUR 143 - 71,500), or double the value of the infringing goods or of the right to use the infringed trademark under regular market conditions).

The Anti-piracy Law provides copyright and neighbouring rights owners with an efficient tool of copyright enforcement – web blocking injunctions. This law covers all copyrighted works and objects of neighbouring rights, except photographic works.

Sanctions under the Russian Code on Administrative Offences

The trademark infringer is administratively liable if the damage caused by the infringement is less than RUB 250,000 (EUR 3,575). Different sanctions apply to different infringements. 

For example, the levels of the applicable fines for the production of fake products depend upon the scope of the infringement, which will be based on the value of the counterfeit goods seized.

The most serious sanctions apply to legal entities that produce or sell counterfeit goods. The fine that may be imposed in this case would be five times the value of the counterfeit goods seized, and in any event not less than RUB 100,000 (EUR 1,430). The counterfeit goods will also be confiscated.

Sanctions under the Russian Criminal Code

If the damage caused by the infringement reaches or exceeds RUB 250,000 (EUR 3,575) or if the offender repeats the offence, he/she may be held criminally liable.

The unlawful use, disclosure or appropriation of an invention or patent that has caused significant damage to the author will result in a fine of up to RUB 200,000 (EUR 2,860) or equal to the offender’s income for 18 months, or imprisonment for up to two years. Similar sanctions apply to infringement of copyright and to the sale of counterfeit goods.

When the offender is a legal entity, criminal sanctions will be applied against the entity’s officials, as legal entities cannot be held criminally liable under Russian law.


Key contacts

Bankovskiy Anton
Anton Bankovskiy
Partner
Head of Intellectual Property