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Enforcement

Jurisdiction

Which courts are empowered to hear trademark disputes?

Trademark infringement disputes are generally heard by commercial courts of first instance located in the constituent parts of the Russian Federation. Their decisions may be appealed to the competent appellate courts. Further appeals (cassations) go to the Russian IP Court and the Economic Board of the Russian Supreme Court. A final, supervision appeal, if accepted, may be considered by the Russian Supreme Court, which is entitled to review and ascertain whether there is substantial breach in law enforcement.

Where a defendant is neither a business entity nor an individual entrepreneur, a court of general jurisdiction shall be chosen as the forum.

Trademark non-use disputes fall under the exclusive jurisdiction of the Russian IP Court, which hears such disputes on the merits in the first instance, while the Presidium of the Russian IP Court hears cassation appeals as the second instance court. Supervision appeals on such category of disputes may also be filed to the Economic Board of the Russian Supreme Court.

Trademark-related disputes may be a matter of unfair competition, which is prohibited in Russia. For example, the unfair acquisition and use of trademark rights is not permitted, and such issue may be considered by the Russian Federal Anti-monopoly Service, its territorial divisions,  and/or competent court.

Actions

What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?

The Russian trademark enforcement system is quite effective and well developed. Infringement of trademark rights may primarily be prosecuted through civil, administrative and criminal proceedings. A special quasi-judicial procedure based on unfair competition is also available. Lastly, cease-and-desist or demand letters have become a popular and obligatory pre-judicial remedy for companies wishing to sue infringers in court and claim damages or monetary compensation.

Civil proceedings

In the framework of civil proceedings, a trademark owner (or its registered/exclusive licensee) is normally entitled to seek the following legal remedies:

  • injunctive relief (preliminary and permanent injunctions);
  • monetary relief (damages or monetary compensation);
  • seizure and destruction of counterfeit goods and related equipment/materials; and
  • publication of the court order.

Civil proceedings begin with a statement of claims (lawsuit), which is to be filed with the competent court. Usually, the residence/location of the defendant will establish the jurisdiction.

Russia does not support a discovery system; therefore, all evidence must be collected and secured in advance of the lawsuit. If it is not possible to obtain certain evidence from the infringer before the action, or the latter refused to disclose the evidence, the plaintiff may discover the evidence through the agency of the court during litigation.

Each party to a civil action is obliged to prove the asserted facts:

  • the plaintiff needs to prove that it is the registered trademark owner or registered exclusive licensee, and the defendant unlawfully uses the litigious trademark; and
  • the defendant needs to prove that there are legitimate grounds for trademark use that exempt it from liability.

The duration of civil proceedings will vary depending on the specificity of the case at issue. Typically, the decision of the first-instance court may be obtained within six to nine months, unless the infringer appeals the decision.   

Civil actions are widely used as the most efficient and viable enforcement option to tackle parallel imports and grey market goods, including trademarked products offered on the Internet, as well as contractual post-termination trademark issues. 

Administrative proceedings

In accordance with the applicable (administrative) law, the unlawful use of a trademark shall entail an administrative fine, as well as confiscation of counterfeit goods (and related equipment/materials) for the purpose of destruction.

Administrative proceedings usually begin with a complaint, which the trademark owner must file with the police or customs authorities, so that they can take action against the infringer. Accordingly, the Police or Customs will be the plaintiff, while the infringer will be the defendant in such type of action. In the course of administrative proceedings, the trademark owner may be engaged as an injured (third) party.  

An administrative action may take three to five months, unless the infringer appeals the decision.

Practically, an administrative procedure proves to be the most efficient and viable enforcement option to stop the importation of counterfeit goods into Russia. This measure is also applied when small stores offer for sale fake products on the internal market.

Criminal proceedings

The illegal use of a trademark may also lead to criminal prosecution.

In accordance with the applicable (criminal) law, the unlawful use of a trademark shall entail criminal liability only in the event that the infringer’s illegal activities cause substantial damages, or if trademark infringement is repeated.

The typical statutory criminal sanctions are a criminal fine, forced labour, corrective measures and imprisonment. In the course of a criminal procedure, the trademark owner is also entitled to file a civil lawsuit to recover damages.

Criminal proceedings vary tremendously in length, but often last one to two years to reach a first-instance decision.

In practice, the criminal procedure is used against large-scale counterfeit operations or gross infringers that manufacture and distribute counterfeit goods in large quantities all over the country.

Unfair competition actions

Trademark infringement may constitute an act of unfair competition. Passing off, as well as imitation of trade dress, are also treated as unfair behaviour, which may be prosecuted.

The Russian Federal Anti-monopoly Service, as well as its territorial divisions, are empowered to consider disputes related to unfair competition through a special quasi-judicial procedure.

This type of procedure starts on the basis of a complaint from the injured party (ie, trademark owner or its local distributor). Should the action on unfair competition be eventually successful, the respondent (infringer) would be forced to cease the illegal activities and pay an administrative fine of up to 0.15% of the infringer’s profits.

This procedure usually takes five to 10 months, although it can be longer if the binding order or decision of the Russian Federal Anti-monopoly Service/its territorial division is appealed in court.

Cease-and-desist letters

Sending a cease-and-desist or demand letter has become a pre-requisite to a court action in certain instances. In particular, a trademark owner will not be able to claim damages or monetary compensation in a civil action if it has not first sent a cease-and-desist letter to the infringer.

The infringer has 30 days to respond to the cease-and-desist letter. The infringer’s failure to respond or refusal to comply with the terms of the letter provides the trademark owner with a legal standing to sue and claim monetary relief in court. 

Sending a demand letter to the alleged infringer claiming a voluntary cessation of trademark infringement may be the easiest and the most effective out-of-court enforcement option in many situations. 

Who can file a trademark infringement action?

Generally, the valid registrant (ie, trademark owner), its registered assignee or registered exclusive licensee is entitled to file trademark infringement actions, provided that their rights and legitimate interests are affected by the unlawful/unauthorised trademark use. Non-exclusive licensees, distributors or other authorised trademark users do not have the same privilege.

What is the statute of limitations for filing infringement actions?

The general statutory period of limitations for filing a trademark infringement action is three years from the date when the claimant became or should have become aware of the infringement. The same period applies to the procedure for the execution of the effective court decision concerning the trademark infringement matter.

What is the usual timeframe for infringement actions?

Please see the section on actions above.

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

Preliminary and permanent injunctive reliefs are generally available and may be granted in trademark infringement disputes.

Preliminary injunctive relief will be awarded where the claimant can demonstrate that failure to stop the infringement will lead to substantial damages and/or make any subsequent court order unenforceable. 

In a trademark infringement matter involving unauthorised domain name registration and use, a special pre-trial procedure exists for obtaining temporary restraining order through a domain registrar. This pre-trial security measure is aimed at ‘locking’ the conflicting domain name; the pre-trial measure is  valid for 14 days to enable trademark owner to file complaint with the competent court, provided that the mark owner gives a warranty for indemnification in the complaint.

Permanent injunctive relief will be granted where a claimant can prove the trademark infringement. A plaintiff must typically provide evidence of the following four elements:

  • the defendant used the mark without authorisation of the trademark owner;
  • the mark used by the defendant is identical or confusingly similar to the owner’s mark;
  • the disputed mark is used in connection with goods or services similar to those for which the owner’s mark is registered; and
  • this creates a likelihood of confusion.

Where the plaintiff fails to prove one of these elements, the court will not make a finding of trademark infringement and, accordingly, will not grant the injunctive relief.

Evidence that may be submitted to prove trademark infringement include:

  • bills of ladings, contracts and other sale and purchase confirmation documents;
  • samples of counterfeit or grey market goods;
  • expert opinions and public survey results;
  • private detective reports and notary public protocols; and
  • audio and video records.

Evidence needs to meet the requirements of relevance and be admitted for consideration.

Essentially, when claiming trademark infringement, the plaintiff must act in good faith. Abuse of rights shall lead to the dismissal of the case.

Remedies

What remedies are available to owners of infringed marks? Are punitive damages allowed?

In addition to preliminary and permanent injunctive reliefs, the owners of the infringed mark can claim the following monetary relief:

  • damages, including actual damages or lost profits; or
  • punitive/statutory damages (known as ‘monetary compensation’) in any of the following form:
    • a fixed amount ranging between RUB10, 000 and RUB5 million;
    • double the price of the counterfeit goods; or
    • double the cost of the trademark licence.

The trademark owner can also seek and obtain:

  • the removal of the trademarks from documents, advertisements and signboards;
  • the seizure and destruction of the counterfeit goods; and
  • the publication of the court order.

Customs enforcement

What customs enforcement measures are available to halt the import or export of infringing goods?

The Russian customs authorities are required to suspend the release of products discovered in the course of customs operations that they suspect infringe trademark rights registered in the Russian Customs IP Register. 

Where products are suspended, the customs authorities must immediately give notice of the interception to the trademark owner by sending the latter an official notice of suspension along with a presentation of the facts and pictures of the seized products. Upon receipt of the said notice, the trademark owner may inspect the products and decide whether to initiate (in case of trademark infringement) or not (in case the shipment is authorised) a legal action against the infringer (importer) within the statutory period. 

The statutory period is 10 working days, which may be extended by another 10 working days if the mark owner files a motivated request reasoned by a corresponding enforcement action. Within this period (ie, 20 working days), the trademark owner may also request samples of the products seized.

In case of trademark infringement, the mark owner can enforce its rights by applying for various enforcement actions. In practice, administrative proceedings will be the most efficient enforcement option against the importation of counterfeits, while civil proceedings will be the only viable enforcement measure against parallel imports.

Defence

What defences are available to infringers?

An alleged infringer may use the following material defences:

  • the mark used is not protected with regard to the goods at issue;
  • the sign at issue was not used in a trademark sense;
  • there is no similarity and likelihood of confusion between the conflicting marks;
  • there is no similarity between the conflicting goods and the goods as to which the respective mark is registered;
  • the defendant has a licence and/or the consent of the owner to use the mark;
  • the plaintiff has no priority right over the conflicting designation (eg, domain name);
  • the plaintiff’s trademark rights are exhausted; or
  • the plaintiff is abusing its rights.

In addition, the defendant can raise the following procedural defences:

  • the period of limitation applies;
  • the plaintiff chose the incorrect jurisdiction or forum; or
  • the plaintiff filed a lawsuit against the wrong defendant.

Further, the defendant can initiate an invalidation action against the disputed trademark. An invalidation action is considered by the Chamber of Patent Disputes of the RUPTO and such action will not stay the infringement proceedings. In other words, the trademark infringement action and the invalidation action will be independent from each other. Otherwise, the defendant can commence an unfair competition action based on unfair acquisition and use of the disputed trademark. Last but not least, the defendant can file an action for trademark non-use with the Russian IP Court.

Appeal

What is the appeal procedure for infringement decisions?

The appeal venues described below are generally available in trademark infringement matters:

  • For commercial court cases:
    • appellate courts review existing evidence, as well as any new evidence if there is a legitimate reason for not submitting it at first instance;
    • the Russian IP Court, acting as the first cassation appeal court, hears cases on the existing case records, but does not re-evaluate the evidence or facts;
    • the Economic Board of the Russian Supreme Court, acting as the second cassation appeal court, also has no power to re-evaluate evidence and facts; and
    • the Russian Supreme Court, in supervision appeals, may review a case and ascertain whether there is a substantial breach in law enforcement.
  • For general jurisdiction court cases:
    • the supreme courts of the constituent subjects of the Russian Federation (eg, in Moscow – the Moscow City Court) review the existing evidence, as well as any new evidence if there is a legitimate reason for not submitting it at first instance;
    • the presidium of the supreme courts of the constituent subjects of the Russian Federation (eg, in Moscow – the Presidium of the Moscow City Court), acting as the first cassation appeal court, hear cases on the existing case records and do not re-evaluate the evidence/facts;
    • the Economic Board of the Russian Supreme Court, acting as the second cassation appeal court, also has no power to re-evaluate evidence and facts; and
    • the Russian Supreme Court, in supervision appeals, may review a case and ascertain whether there is a substantial breach in law enforcement.

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