Civil litigationi Forums
Trademark infringement disputes are heard by commercial courts of first instance located in constituent parts of Russia. Their decisions may be appealed to the appellate commercial courts. Further appeals (on current cases) go through the IP Court and the Russian Supreme Court. Finally, a supervision appeal may be filed with the Russian Supreme Court.
In the case of a defendant not being a business entity or an individual entrepreneur, a court of general jurisdiction may also establish competence.
Trademark non-use disputes come under the exclusive jurisdiction of the IP Court, which hears these disputes on the merits in the first instance, and the Presidium of the Court hears cassation appeals on current cases. A supervision appeal may be filed with the Supreme Court.ii Pre-action conduct
Pre-action cease-and-desist letters are not required. The exception is for claims for damages or compensation for IP infringement, where there may be a cause for action if there is a total or partial refusal of payment, or in the case of no response within 30 days.
Cease-and-desist or demand letters are now mandatory to a certain extent. In other words, it is not possible to sue an infringer in court by claiming damages or monetary compensation, if the demand letter is not dispatched in advance of the civil action. In accordance with the relevant law, the infringer has 30 days to respond to the cease-and-desist letter. Failure to respond, or receipt of a negative reply, provides the trademark owner (or its registered or exclusive licensee) with a legal standing to claim monetary relief. The easiest and most effective out-of-court enforcement option is to send a demand letter to the alleged infringer requesting a voluntary cessation of the trademark infringement.iii Causes of action
The following causes of action are applied in terms of trademark enforcement:
- trademark infringement – use of the designation, similar to the trademark, to individualise goods or services for which the trademark is registered, or for homogeneous goods or services, if as a result of such use, likelihood of confusion arises; and
- trademark infringement that may be a matter of unfair competition, which is prohibited in Russia. Unfair acquisition and use of trademark rights are not permitted. Passing-off and imitation of trade dress are also treated as unfair behaviour, which may be prosecuted. The FAS is empowered to consider disputes related to unfair competition through a special quasi-judicial procedure. This starts on the basis of a complaint to be filed by the injured party (e.g., a trademark owner or local distributor). Should the action on unfair competition be successful, the respondent (infringer) would be forced to cease the established illegal activities and pay the administrative fine in favour of the state budget (which may be up to 0.15 per cent of the corresponding infringer’s profits). This procedure usually lasts about six to 10 months, although it can take longer if the binding order from the FAS is appealed in court.
Company names are protected against unauthorised use for the same activity by companies whose company name was included in the state company register later than the name of the plaintiff.
As regards commercial designations, it is not permitted to use a designation that may create confusion regarding ownership of the enterprise by a specific person, in particular a designation that is confusingly similar to the company name, trademark or a commercial designation owned by another person.
Domain names are not treated as IP subject matter. However, good-faith senior users of domain names may bring a charge of bad faith if a lawsuit is filed by persons who register the senior users’ designation as a trademark (in certain cases, a trademark invalidation action may be also appropriate).iv Conduct of proceedings
Proceedings are initiated when all procedural requirements are met (i.e., payment of state duty, notification of the defendant, etc.). A representative needs to have a duly executed power of attorney.
The court schedules a preliminary hearing during which it considers whether the case is ready for a main hearing on the merits. The defendant is obliged to provide a response (objections) to the lawsuit.
Each party is obliged to prove the asserted facts: the plaintiff must prove that the defendant uses the trademark; and the defendant must prove whether there are legitimate grounds for use, or the defendant is in breach.
Various types of evidence may be used during the proceedings – documents (e.g., bills of lading and other sale confirmation documents), physical evidence (such as samples of counterfeit products), expert opinions, social poll results, private detective reports, witness statements and audio and video tapes. All evidence must meet the requirement of relevance to the case and admissibility.
At the appeal stage, new evidence is submitted only as a means of explaining why the evidence was not submitted in the first instance.
Typically, proceedings in the first instance court last for three to six months, unless there are notification issues. The decision is made (announced) upon conclusion of the proceedings, and adopted (issued) within five days of the announcement.
The winning party has the right to recover court expenses (including legal fees), the amount of which is determined by the court, based on the submitted documents.v Remedies
The remedies available for trademark infringement include:
- permanent injunction;
- damages or monetary compensation (in one of three determinations: (1) between 10,000 and 5 million roubles; (2) twice the cost of the counterfeit products; or (3) twice the cost of the licence);
- seizure and destruction of the counterfeit products; and
- publication of the court order.
The plaintiff may also claim a preliminary (temporary) injunction, such as the arrest of the allegedly counterfeit goods pending adjudication.
Other enforcement proceedingsi Administrative proceedings
Unlawful use of a trademark shall incur an administrative fine (which has to be paid in favour of the state budget) and confiscation of the counterfeit goods for the purpose of destruction.
Administrative proceedings usually begin with a complaint, which the trademark owner has to file with the police or customs authority, so that the latter can take action. Administrative action may take about three to five months to complete, unless the decision of the first instance court is appealed by the infringer. Practically, an administrative procedure proves to be the most efficient enforcement option to cease trademark infringement at the border in the context of importation of counterfeit goods into Russia. This measure is also applicable when small shops offer for sale and sell counterfeit products on the domestic market.ii Criminal proceedings
Illegal use of a trademark may also lead to criminal proceedings, but only in the event of substantial damage being caused to the trademark owner, or if the trademark infringement is repeated. The typical statutory criminal sanctions are (1) a criminal fine; (2) forced labour; (3) correctional work; or (4) imprisonment. In the course of criminal procedures, the trademark owner is also entitled to file a civil lawsuit to recover damages. The total duration of criminal proceedings is usually hard to predict, although the approximate timing is one to two years, unless the decision of the first instance court is appealed by the infringer. In practice, criminal procedures are applied against large-scale or gross infringers who are manufacturing and distributing counterfeit goods in large quantities all over the country.