IP protection and dispute management in Russia

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Russian intellectual property law dates back to 1992, when Russia drafted its IP laws with an eye on German legislation. This meant that the law was solid from the beginning. Since economic and political relations were quickly developing, the IP laws underwent changes almost every year to meet shifts in the economic environment.

The most dramatic changes were made in 2008, when all IP laws were consolidated in part IV of the Russian Civil Code, in which all IP laws were included as chapters. This was accompanied by a major reshuffle of all constituent legislation. IP laws had 328 articles before inclusion in part IV, and more than half of them – 169 to be exact – were amended or completed. Seven new articles were added.

Over the years since 2008, IP laws have been a constant focus of attention for lawmakers. From 2008 to 2024 the laws were amended 37 times, with changes ranging from important adjustments to insignificant ones. The latest change came into force on 10 February this year, when article 1248 of the Civil Code was amended to balance the rights of plaintiffs in courts and appellants at the Chamber of Patent Disputes of the patent office, Rospatent, to claim compensation after a win.

Currently part IV of the Civil Code includes copyrights and related rights, patents for inventions, designs, plant varieties and animal breeds, appellations of origin and geographical indications.

Filing statistics are available up to 2022 only, and they show the biggest filer in 2022 was the US, with 1,556 invention patent applications and 2,667 trademark applications. China filed 1,252 patent applications and 3,998 trademark applications, while Japan filed 605 patent applications and 648 trademark applications.

The Russian patent office is applicant-friendly and grants patent and trademark registrations in less than a year. A lower number of patent applications in Russia in comparison with the figures for previous years leads to the situation where Russian companies read published patent applications in other countries and use those inventions because they stay unprotected in Russia.

Unfair trademark filings

Foreign IP owners are often worried about the level of enforcement of IP rights in Russia. Contrary to what may be suggested in the media, the enforcement situation is quite stable. Attempts by Russian trademark trolls to register trademarks identical or similar to those of companies that left the Russian market have all failed. To answer the concerns of foreign companies, the Russian patent office issued a statement pointing out that requirements for the registration of trademarks had not changed and all efforts by trademark trolls would be dismissed.

Eurasian patents

Russia is a member of the Eurasian Patent Convention, which embraces eight countries: Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan and Turkmenistan. The Eurasian Patent Office accepts patent and design applications in the Russian language and grants patents immediately valid in all member countries without translation, which may present certain advantages for the applicants in regard to prosecution and money.

Parallel imports

Russia has national exhaustion of rights. After the beginning of what Russian authorities have called a “special military operation”, some foreign companies left the market, thus creating shortages of certain products. Following that, the Ministry of Industry and Trade issued a list of goods allowed for parallel import. The list includes goods with which shortages are felt in the market, and it is regularly reviewed for products to be added or excluded.

Sometimes certain goods are included in the list by mistake, for example when a foreign firm is still present in the market or the goods of that firm are on the market. In that case, the list is promptly corrected when requested by the IP owner. If a product is not on the list and is brought to Russia, the IP owner will be notified through its representative and marketing of the goods will be forbidden in Russia. In most cases the importer will have to re-export the goods. If the goods do not comply with safety requirements they will be ordered to be destroyed.

Licensing

IP can be licensed within the scope agreed by and between the parties. A licence agreement must be made in writing and signed by both parties. Legal confirmation of the licence agreement is not required, but its registration with Rospatent is mandatory in relation to patents and trademarks. A licence that is not registered in respect of registered IP will be regarded as non-granted (under article 1232(6) of the Civil Code). As a result, for instance, an unregistered licence will provide no sublicensing rights to the unregistered licensee, whether it is an exclusive licence or a non-exclusive one. Also, an unregistered exclusive licence will provide no right of enforcement against third parties (infringers) to unregistered exclusive licensees, although such a right is available according to the law (article 1254 of the Civil Code).

The material terms of a licence agreement are as follows:

• Subject matter of the licence (that is, registration numbers and/or a description of the licensed IP rights, as applicable);
• Details of the licensed goods or services (applicable only to trademark licences);
• Type of licence (that is, whether it is sole, exclusive or non-exclusive);
• Field of use or permitted use;
• Licensed territory (the default territory is the whole of Russia);
• Licensed term (the default term is five years); and
• Other limitations and provisions that may be provided for in the licence agreement.

Russia supports the principle of freedom of contract. Therefore, parties can generally agree on any terms and conditions under a licence agreement that are not contrary to the relevant laws and regulations.

Enforcement

Courts. Russia offers a wide array of opportunities to support the rights obtained by IP applicants. There are about 100 commercial courts covering every region of Russia. There is also one specialised court for IP. Commonly, in a case of infringement of IP rights, the plaintiff may initiate a court action at the regional commercial court, whose judgment may be appealed at the IP court and further at the supreme court.

In exceptional cases the constitutional court may express its opinion on some cases. Commercial courts are free to issue judgments on the basis of law. To streamline court practice the supreme court occasionally reviews judgments of commercial courts and issues reports summarising the courts’ judgments. These reports may be issued once or twice a year and serve as guidance for all other courts.

It should be noted that the courts are not bound by political considerations and issue judgments that are strictly guided by law. For example, Yokumi Trading, a Russian company, filed trademark application No. 2020759150 for its Kioshi branding. The patent office refused registration because the trademark applied for was similar to KASHI, a trademark belonging to US company Kashi, and other trademarks. The applicant tried to appeal the decision at the IP court without success, with the judgment dated 24 March 2023.

The Chamber of Patent Disputes under the patent office is a quasi-judicial body. It examines various IP appeals. Such cases are many, and what follows are just two examples. Japanese firm Canon obtained patent No. 2754838 for a “technological cartridge”, and Russian company Topprint appealed against the granting of the patent. The patent was left in force, albeit with some changes.

In another case, Japan’s Asics Corp appealed after Russian company Sojuz-Obuv obtained trademark registration No. 890294 for a logo. The Sojuz-Obuv logo bore similarities to the one Asics had earlier registered as trademark No. 71296. The Russian firm’s trademark was cancelled in full in a decision dated 6 December 2022.

Customs. As has been noted above, Russia has national exhaustion of rights. Russian customs is on guard for the rights of IP owners, and has an IP register in which any trademark owner may include its trademark. The database is available at any checkpoint across Russia so, whenever suspicious goods are found, customs immediately informs the patent owner through the authorised representative about the alleged infringement.

If the IP owner confirms infringement, the counterfeit goods are destroyed and the infringer pays a fine within the framework of an administrative court case. A civil case is not excluded either – the IP owner may also claim damages or compensation with much less burden of proof.

Another venue for enforcement is the anti-monopoly body. If there is a case of unfair competition the IP owner may initiate a case with that body.

GORODISSKY & PARTNERS
B.Spasskaya Str., 25, Bldg. 3
Moscow 129090, Russia
Tel: +7 495 937-6116
Fax: +7 495 937-6104
Email: BiriulinV@gorodissky.com
www.gorodissky.com

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