EnforcementTrademark enforcement proceedings
What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?
The measures listed below are those that can be undertaken against an alleged infringer in Russian law.
A cease-and-desist letter may be sent (in commercial courts this is optional for non-material claims, but mandatory for material claims such as compensation or damages).
A civil route of action is the most commonly used option by rights holders, since it allows them to claim the following, but it usually takes four to six months to obtain a decision in the first instance:
- cessation of trademark infringement;
- recovery of losses (damages) or payment of a statutory compensation;
- publication of the court’s decision with the aim of restoring goodwill of the injured party; or
- removal from the goods or packaging of the illegally used trademark or sign confusingly similar to it, or destruction of the counterfeited goods, labels or packages at the expense of the infringer.
In accordance with the Criminal Code, the illegal use of a trademark shall entail criminal liability for the infringer only if it was committed repeatedly or caused damage in excess of 250,000 roubles. The total duration of criminal proceedings is usually about one to two years.Administrative proceedings
Administrative proceedings start from the filing of a petition with the police. Based on the petition the police conduct a raid on the infringer’s premises (offices, warehouses and shops) and seize all the counterfeit goods discovered therein. As soon as the police have all the evidence of the infringement they issue an administrative violation report and send all the materials of the case to the court. There a final decision is made, according to which the court may refuse to satisfy the application of the police or hold the infringer to administrative responsibility, which includes imposing a fine and confiscating all the seized goods for their subsequent destruction. Usually, this procedure takes three to four months.Special administrative procedure
Trademark infringement is an instance of unfair competition. The Russian Antimonopoly Service (RAS) is empowered to consider disputes related to unfair competition through a special administrative procedure. This procedure starts on the basis of an application filed by the trademark holder and terminates with the decision taken by the RAS. The latter may be appealed with the commercial court. The procedure lasts about four to nine months.Border protection
A trademark can be recorded in the special IP Customs Register to prevent unauthorised importation of the branded goods into Russia. Where the trademarks are entered into the Customs Register the customs authorities monitor every consignment of the goods marked with the trademarks in question, and if they discover unauthorised importation they detain the goods (the term for detaining is 10 plus 10 days) and inform the rights holder. 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 in order to bring the infringer to responsibility. Including the trademarks in the Russian Customs Register may be a wise precautionary measure to avoid penetration of counterfeit products into Russia.Procedural format and timing
What is the format of the infringement proceeding?
Civil infringement proceedings start with collecting evidence by the rights holder, and drafting and sending a cease-and-desist letter if necessary. In commercial courts (handling disputes between companies and private entrepreneurs - most cases are handled by commercial courts) the cease-and-desist letter stage is optional for non-material claims (eg, cessation of infringement, prohibition on the use of IP subject matter or confiscation of the infringing products and equipment used for manufacturing such products). However, since 12 July 2017 it has become mandatory to send a cease-and-desist letter for material claims (damages or compensation) 30 days before filing a civil action with the court. It should be noted that the mentioned pretrial order is not applicable to cases handled by common courts (handling disputes in which individuals are involved).
No discovery proceedings are provided by Russian law and the parties must secure evidence themselves. The decision on the case is issued by a court on the basis of evidence submitted by the parties. In cases where issues require special knowledge, an independent expert may be ordered by the court. Live testimony is allowed, but not commonly used, as judges prefer to rely on material evidence and written submissions. The civil proceedings typically take four to six months to obtain a decision from the initial court.
Russian law also provides an administrative and criminal enforcement mechanism that starts from filing a complaint with the police (or public prosecutor). During the proceedings, an independent expert may be called by the police investigator. The final decision on the administrative or criminal case is issued by a court. The administrative procedure usually takes about three to four months, whereas the criminal procedure takes about one to two years.
Unfair competition actions are also available and cases such as illegal use of IP, false advertising, imitation of the products, copycats and so on are handled by the Antimonopoly Authority. It usually takes about three to four months to obtain a decision in an unfair competition case.Burden of proof
What is the burden of proof to establish infringement or dilution?
Under Russian law, each party to the dispute must prove their statements and legal arguments by the use of relevant evidence.Standing
Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?
The trademark owner or his or her registered exclusive licensee shall be entitled to sue for trademark infringement only. Administrative or criminal proceedings may be initiated on the basis of a complaint filed by any person or on the basis of information received by the police (or public prosecutor) themselves. In such cases the trademark owner can be involved as an injured party.Border enforcement and foreign activities
What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?
The Russian law enforcement authorities can deal with infringements committed within the territory of the Russian Federation only. However, the existing border protection mechanisms, such as the Customs IP Register, allow for prevention of the unauthorised importation of goods into Russia. Note that there is also the Eurasian Economic Union between Russia, Kazakhstan, Belarus, Armenia and Kyrgyzstan, within which no customs borders exist and the goods may flow from one country of the Union to another without customs control. With this in mind, registration (obtaining a legal protection) of the trademark and its recording in the local Customs IP Registers is advisable.
Note that in order to register a trademark with the Customs IP Register, in practice, it is necessary to provide the Customs Office with evidence of facts of importation of counterfeit goods into Russia. A simple application without supporting evidence will not be sufficient for successful registration.Discovery
What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?
Russian law does not provide discovery proceedings and the parties to the dispute should collect evidence themselves. In the meantime, a person participating in the case and lacking the opportunity to obtain the necessary evidence from the person possessing it may file a motion for the court to order the presentation of this evidence. The evidence must be specified in the motion along with the circumstances significant to the case, which may be established by this evidence, as well as the reasons impeding the obtainment of the evidence, and its location. If the motion is satisfied, the court orders the person possessing the appropriate evidence to present it.Timing
What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?
Russian law provides for two types of security measures: preliminary and interim. A motion for preliminary injunctions can be filed before filing the lawsuit. In this case, the judge must consider the motion, and if the security measures are granted the plaintiff is granted a term not exceeding 15 days in which to file the lawsuit. A motion for an interim injunction can be filed along with the lawsuit or at any stage of the court proceedings before the judgment is issued. A motion for security measures must be considered by the court no later than the next day from the filing date.
If a pretrial order is envisaged by the law as a mandatory stage (eg, for material claims such as damages or compensation), the court shall give the plaintiff up to 15 days to send a cease-and-desist letter to the opposite party and up to five days to file a lawsuit upon expiry of the term for pretrial procedures (in particular, 30 days for material claims in IP disputes).
The typical time frame for civil litigation is four to six months for the decision of the first-instance court to be issued. The decision enters into force in a month if no appeal is filed. The resolution of the Court of Appeals enters into force as of the date it is issued in writing and may be appealed to the IPR Court within two months. The resolution of the IPR Court can be appealed to the Economic Collegium of the Supreme Court within two months and its judicial act can be further appealed within three months. The last instance is the Presidium of the Supreme Court.Limitation period
What is the limitation period for filing an infringement action?
As a general rule, the limitation period for filing a trademark infringement action is three years from the date the rights holder became aware or should have become aware about the committed infringement.Litigation costs
What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?
The typical cost range for handling a trademark infringement case in the first instance court is about US$20,000 to US$25,000. This amount may vary, however, depending on the complexity of the case. The costs for handling the case at the appeal instances could be within the range of US$7,000 to US$15,000 per appeal instance.Appeals
What avenues of appeal are available?
The decision of the first instance court can be appealed to the Court of Appeals. The resolution of the Court of Appeals can be appealed to the IPR Court. The resolution of the IPR Court can be appealed to the Economic Collegium of the Supreme Court of the Russian Federation. The resolution of the Economic Collegium of the Supreme Court of the Russian Federation can be appealed to the Presidium of the Supreme Court of the Russian Federation.Defences
What defences are available to a charge of infringement or dilution, or any related action?
The defendant may try to prove the absence of the infringement (such as challenging the evidence) or initiate an invalidation action against the trademark. Note, however, that an invalidation action is considered by the administrative authority (the RPTO) and this is not grounds for the court to postpone or suspend the infringement proceedings. Both trademark infringement litigation and invalidation cases will be independent of each other. Also, the defendant may initiate an unfair competition action claiming that obtaining a trademark registration and suing for an infringement are acts of unfair competition (such as in the case of a trademark being registered by a distributor or other third party preventing the producer of genuine goods from distributing the goods on the Russian market). Finally, the defendant may claim an abuse of rights on the part of the trademark owner, which is legal ground for the court to dismiss the infringement action (such as in cases where the trademark owner does not use the trademark and the only purpose of filing the lawsuit is to inflict harm on the competitor).
Of course, the defendant can also file a non-use cancellation action with the IPR Court. However, in cases of cancellation of the trademark the legal protection shall be terminated from the date that the decision enters into force and shall not release the defendant from monetary claims (damages or statutory compensation).Remedies
What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?
Russian law provides for two types of security measure: preliminary and interim. The motion for preliminary injunctions can be filed before filing the lawsuit. In this case, the judge must consider the motion, and if granting the security measures must give to the plaintiff a term not exceeding 15 days for filing the lawsuit. The motion for interim injunctions can be filed along with the lawsuit or at any stage of the court proceedings before the judgement is issued. The motion for security measures must be considered by a court no later than the day after the filing date.
The court grants the security measures if the following conditions are observed:
- if failure to take these measures may impede or make the enforcement of a judicial act impossible, and likewise if the enforcement of a judicial act is expected to take place outside of the Russian Federation;
- the security measures are required for the purpose of preventing the infliction of extensive damages to the applicant;
- the claims for security measures do not repeat the claims stated in the lawsuit; or
- the claims for security measures are adequate to the claims stated in the lawsuit.
According to Russian law, the trademark owner shall be entitled to claim:
- cessation of trademark infringement (permanent injunction);
- recovery of losses (damages) or payment of statutory compensation: within the range of 10,000 to 5 million roubles (determined by the court on the basis of evidence provided and circumstances of the case), or double the cost of counterfeit goods, or double the cost of a licence (royalties);
- publication of the court’s decision with the aim of restoring goodwill of the injured party; and
- removal from the goods or their packages of the illegally used trademark or sign confusingly similar to it, or destruction of the counterfeited goods, labels or packages at the expense of an infringer.
In the case of illegal use of a trademark or service mark, name of the place of origin of goods or similar designations for homogeneous goods, if this deed has been committed repeatedly or has caused substantial damage it shall be punishable by:
- a fine of 100,000 to 300,000 roubles, or the amount of the wage or salary, or any other income of the convicted person for up to two years;
- compulsory work for up to 480 hours;
- corrective labour work for up to two years;
- imprisonment for up to two years with a fine of up to 180,000 roubles; or
- a fine in the amount of a wage, salary or other income of the convicted person for up to six months.
The actions specified above, committed by a group of persons by previous concert or by an organised group shall be punishable by:
- a fine of 500,000 to 1 million roubles or the amount of the wage, salary or other income of the convicted person for three to five years;
- compulsory labour work for up to five years; or
- imprisonment for up to six years with a fine of up to 500,000 roubles or a fine in the amount of a wage, salary or other income of the convicted person for up to three years or without a fine.
Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?
In essence, commercial disputes are considered by state courts. However, Russian law provides a possibility to entrust the resolution of a dispute to a private arbitration tribunal or mediator if both parties agree to this. While the Law on Arbitration Courts in the Russian Federation regulates respective procedures and is indeed a good alternative to the state court, the main idea of the Law on Alternative Dispute Resolution with the Participation of an Intermediary (Mediation) is to keep people out of the courts and help them to solve the dispute without litigation. If the mediator fails to help the parties to find a solution the dispute may be solved by a state court or an arbitration tribunal. The decisions of both state courts and arbitration tribunals are obligatory for the parties and must be enforced. Where the party fails to enforce the decision the other party in whose favour the decision is issued shall be entitled to file an application with the Bailiff Service to force the enforcement of the judicial act.