INTELLECTUAL PROPERTY RIGHTS IN INTERNATIONAL
TRADE: NEW LEGAL SOLUTIONS AND CUSTOMS
PRACTICE
OKSANA KUROCHKINA
Customs & Corporate Lawyers
The accession of the Russian Federation to the World trade
organization - Agreement on trade related aspects of
intellectual property rights (TRIPS Agreement)
The creation of the Customs and the formation of the
Common economic space - Agreement
on uniform principles
What’s new
Customs & Corporate Lawyers
Agreement on uniform principles of regulation in the sphere of protection of
intellectual property rightsPROVIDES for
Introduction of national
treatment in the field of protection
and enforcement
of intellectual property
The introduction of regional principle of exhaustion
rights on trademark
Provision of rights of authors
and other copyright holders to
receive remuneration for
the use of objects of
copyright and related rights in the cases when
the implementation of the relevant
copyright in individually way
is difficult
Measures of legislative order that will provide
effective suppress the
trade in counterfeit
goods on the territory of the Customs Union
and also common
measures to combat
violations of intellectual
property rights in Internet
Customs & Corporate Lawyers
Customs & Corporate Lawyers
As a result of protection of intellectual property rights in 2012, the customs authorities of the Russian
Federation identified, including in joint operations with Ministry of the interior of Russian Federation, 19,1 million units of counterfeit goods. Only since
2007, customs authorities revealed 68.5 million units of counterfeit goods
Customs & Corporate Lawyers
The customs register of objectsintellectual property
•Federal law of 27.11.2010 N 311-FL «On customs regulation in the Russian Federation»•Administrative regulation of the Federal customs service of execution of the state function on maintenance of the customs register of objects of intellectual property, approved by Order of the FCS of the Russian Federation from 13.08.2009 N 1488
The national legislation of
Russia
Customs & Corporate Lawyers
As 10.04.2013 in the customs register registered 2650 intellectual property objects owned by both foreign, and Russian companies. There are 2618 trademarks, 30 objects of copyright, 2 appellations of origin of goods
Customs & Corporate Lawyers
Dynamics of the process of inclusion of intellectual property objects in the customs register of objects of intellectual
property in 2004 - 2012
Customs & Corporate Lawyers
In the commodity structure of the customs registry prevail alcoholic drinks, confectionery, sports clothing and footwear
Commodity structure of the customs register of objectsintellectual property in 2012
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Measures applied by customs authorities for the protection of rights to objects of intellectual property
Suspension of release of goods containing objects of intellectual property, for a period of 10
(ten) working days
Customs & Corporate Lawyers
Application of the principle EX OFFICIO
In the Russian Federation, the customs authorities may suspend the release of goods containing objects of intellectual property, not entered in the register, when it disclosure signs of infringement of intellectual property rights (principle of ex officio)
The release of goods shall be suspended for 7 working days. The customs authority may extend this period by no more than 10 working days
For the period from the beginning of 2011, the customs authorities was made 164 decision to suspend the release of
goods falling under the features of the counterfeit, which resulted in the excitation of the 53 cases on administrative
offences, or 32% of all cases of suspension
Customs & Corporate Lawyers
Measures on protection of rights to objects of intellectual property not apply in respect of goods transferred through the customs border
By individuals for personal
use, including sent to their
address in the international
posting
In accordance with the customs
procedure of customs transit
Diplomatic missions,
consulates, other official
representations of foreign states
Customs & Corporate Lawyers
•Civil liability•Administrative responsibility•Criminal liability
The legislation of the countries-
members of the Customs Union provides for the
following types of legal liability for offences in the
field of intellectual
property
Types of legal liability in the field of intellectual property
Customs & Corporate Lawyers
The customs authorities for the 2012 was initiated 996 administrative cases. Of them 968 administrative cases-
according to article 14.10 of CoAO of Russia, illegal use of a trademark) and 28 administrative cases - on part 1 of
article 7.12 of the administrative code of Russia (infringement of copyright and related rights). 25% of the
total number of the trial proceedings were terminated due to lack of evidence events and composition of the
administrative offenses and 10% in connection with the commission of the customs officials significant procedural
violations.
Customs & Corporate Lawyers
Customs authorities bring an action cases about the administrative offences at revealing illegal use of objects of intellectual property
In the course of implementation of customs control of
the goods when goods are placed
under the customs procedure
in 2012 prevented
damage to the owners of objects
of intellectual property for the amount of more
than RUB 2.3 billion
In the course of checking the legality
of the use of intellectual property, which is held by the customs authorities after the release of goods - «post-entry control» (art. 122 of the Customs code of the Customs Union)
When establishing violations of
intellectual property rights in respect of the goods illegally transported across the Customs border
of the Customs Union and those in the civil
circulation on the territory of the
Russian Federation
Customs & Corporate Lawyers
Customs & Corporate Lawyers
In 2012, the customs authorities, including in joint operations with Ministry of the interior of Russian
Federation, revealed 19,1 million units of counterfeit goods. Only since 2007, customs authorities revealed 68.5 million
units of counterfeit goods
As a result of identified cases of movement of goods with signs of infringement of intellectual property rights by customs authorities in 2012 prevented damage to the
owners of objects of intellectual property for the amount of more than RUB 2.3 billion.
Customs & Corporate Lawyers
Normative-legal
base of the
Customs Union
Customs code of the
Customs Union
The agreement on
the single customs
registry of intellectual property of
the countries-members of the Customs Union from 21/05/2010
Decision of the Commission of
CU from 18.06.2010 N
290«On the rules of
interaction of customs bodies
of countries-members of the Customs Union on the issues of
a single customs
registry of intellectual
property objects»
A single customs registry ofintellectual property objects
Customs & Corporate Lawyers
A single customs registry of intellectual property objects
INCLUDES
Trademarks
Service marks
Objects of copyright
Objects of interfacing rights
A CONDITION FOR INCLUSIONRegistration of the rights to object of intellectual property
rights in each countries-member of the Customs Union
The necessity of unification of the civil legislation of the Customs Union countries-members
Customs & Corporate Lawyers
The procedure of making information about the object of intellectual property in a Common customs registry:
Application to the central
customs body of one
of the country-
member of the Customs
Union
Attached to the
application documents, confirming
the existence of intellectual
property rights in
each country-
member of the Customs
Union
Simultaneously with the application submitted a
written obligation of
the right holder of
compensation for material
damage
The right holder also obliged to
submit the contract of
insurance of liability for
causing material
damage to persons in
connection with the suspension
of release of goods, legally binding in all
countries-members of the customs Union
The amount of insurance must be not less than 10 (ten)
thousand Euro
Customs & Corporate Lawyers
• Customs bodies have the authority:• To suspend the release of goods showing
signs of counterfeit included in the customs register;
• To suspend the release of goods, not included in the customs register;
• To proceed with a case of administrative offences related to infringement of intellectual property rights;
• To impose provisional measures (seizure, attachment);
• To conduct administrative investigations
Russian Federation
Analysis of authorities on protection of intellectual property rights by customs authorities on the territory of the Customs Union
Customs & Corporate Lawyers
• а) таможенные органы наделены полномочиями:
• приостанавливать выпуск товаров, имеющих признаки контрафактных;
• б) таможенные органы не имеют полномочий:• заводить дела об административных
правонарушениях, связанных с нарушением прав интеллектуальной собственности;
• налагать обеспечительные меры (арест, изъятие);
• проводить административные расследования;• в) в таможенном реестре объектов
интеллектуальной собственности в январе 2013 года зарегистрировано 257 объектов интеллектуальной собственности (товарных знаков)
Республика Казахстан
Анализ полномочий по защите прав интеллектуальной собственности таможенными органами на территории Таможенного
союза
Customs & Corporate Lawyers
• а) таможенные органы наделены полномочиями:• приостанавливать выпуск товаров, имеющих признаки
контрафактных;• б) таможенные органы не имеют полномочий:• приостанавливать выпуск товаров, имеющих признаки
контрафактных, не включенные в таможенный реестр;• заводить дела об административных правонарушениях,
связанных с нарушением прав интеллектуальной собственности;
• налагать обеспечительные меры (арест, изъятие);• проводить административные расследования;• в) в таможенном реестре объектов интеллектуальной
собственности зарегистрировано 90 объектов интеллектуальной собственности (товарных знаков).
Республика Беларусь
Анализ полномочий по защите прав интеллектуальной собственности таможенными органами на территории Таможенного
союза
Customs & Corporate Lawyers
Will be soon adopted a number of important documents aimed at harmonizing the
procedures of intellectual property rights protection in CU:
•Agreement on trademarks of the Common economic space and appellations of origin of goods•Agreement on coordination of actions on protection of intellectual property rights•The agreement on the unified procedure of the management of copyright and related rights on a collective basis (with the procedure collecting fees charged with the equipment and material carriers)•Regulations of a single customs registry of intellectual property objects (with the definition of the Eurasian economic commission as a body performing its management)
Customs & Corporate Lawyers
PARALLEL IMPORT. EXHAUSTION OF
RIGHTS
Customs & Corporate Lawyers
Exhaustion of rights –it is a way of balancing the interests of
the right holder and the companyParallel import- introduction into
civil turnover, goods, protected by trademark, by importing without the permission of
the copyright holder in the country, not
intended for its distribution
The national principle of
exhaustion of trademark rights -
the loss of the owner of exclusive
rights to use a trademark, provided the national law on the protection of
intellectual property, after the first
introduction of the goods into civil
circulation by him or with his consent
inside the country
Regional exhaustion of
trademark - the loss of the owner of exclusive rights to use a trademark,
after the first introduction of the
goods into civil circulation by him
or with his consent, not only inside the country but also in the whole region (for example, a Union of several
states)
The international exhaustion of
trademark - the loss of the owner of exclusive rights
to use a trademark, after
the first introduction of the goods into
civil circulation by him or with his consent in any
part of the world
Customs & Corporate Lawyers
Customs & Corporate Lawyers
Parties introduce the principle of the exhaustion of exclusive rights to the trademark
Agreement on uniform principles of regulationin the field of protection and enforcement of intellectual property rights
Signed by the Government of the Republic of Belarus, Government of the Republic of Kazakhstan and the Government of the Russian Federation at 31 December 2010
Customs & Corporate Lawyers
THE PROPOSALS OF THE FEDERAL ANTIMONOPOLY SERVICE
parallel import increases inside brand
competition by reducing the opportunities for
the trademark owner to use its position on the market and to increase
the rates on certain territories (regional
markets)
parallel import increases
competition in the distribution of goods
some manufacturers themselves develop parallel importation and use of parallel importers in those
cases when they want to get rid of excess
inventory at overproduction
FAS of Russia believes that the shift from the national to the international principle of exhaustion of rights in this period, a
beneficial effect on the development of competition in the Russian Federation may stimulate the growth of consumer activity
Customs & Corporate Lawyers
Judicial practice in the Russian FederationFEDERAL ARBITRATION COURT OF THE
MOSCOW DISTRICTDETERMINATION
02.07.2012 Case № A40-79447/11-5-493 Company «DIAGEO IRELAND» appealed to the Moscow Arbitration court with a claim against LLC «Yes-link» on the protection of exclusive rights for the trademark
«GUINNESS»
«Proceeding from the provisions of article 12 of this Agreement and to the provisions of art. 1229 of the civil code that the right holder is entitled at its discretion to permit or prohibit other persons using the
means of individualization»
«Recalling article 13 of this Agreement, the Respondent does not consider that this provision provides for exhaustion of the
exclusive right only when the goods are put into civil circulation by the right holder or with his consent. Since in this case the Respondent has not provided evidence that the goods put on the market by the right holder or with his
consent, article 13 of the said Agreement could not be applied to legal relations subject
of the examination in the present case»
Customs & Corporate Lawyers
Judicial practice in the Russian FederationTHE SUPREME ARBITRATION COURT OF THE RUSSIAN FEDERATION
Consideration of the complaint of the Vladivostok customs officials on the case № A-51-6603/2011 about the appeal of IP Chudov S.V. illegal decision to suspend the
release of goods
«Because Chudov SV at the time of presentation to the customs clearance of the goods marked with the trademark «YAMAHA», and the decision on suspension
of release of goods was not provided evidence of consent of the owner for the import of the
disputed goods on the territory of the Russian Federation, the
customs had grounds for suspension of the disputed
goods»
«Under such circumstances, the contested decision was made by customs in the framework of the existing customs legislation and
within its scope of authority...Pass the Presidium of the
Supreme Arbitration Court of the Russian Federation case no A51-6603/2011 Arbitration court of
the Primorsky territory for supervisory review of the
decision»
Customs & Corporate Lawyers
Judicial practice in the Russian Federation
The degree of SAC of the Russian Federation on case № A-51-6603/2011
Cancel judicial act fully adopt the new without sending the case for retrial
The degree of the Arbitration court of Primorsky territory 11.07.2011 on the case №A51-6603/2011, the degree by the Fifth arbitration appeal court of 30.09.2011 and resolution of the Federal arbitration court of the Far Eastern district of 27.01.2012 of the same case to cancel
Refuse IP Chudov S.V. in a claim to invalidate the decision of the Vladivostok customs authorities to suspend the release of goods for the Declaration of goods
Customs & Corporate Lawyers
THE PROPOSALS OF THE FEDERAL ANTIMONOPOLY SERVICE
To amend article 1487 of the Civil code of the
Russian Federation by deleting the words «on the
territory of the Russian Federation»
To Supplement the Federal law
from 26.07.2006. №
135-FL «On protection of competition»
art. 14 the following content:
«allowed actions of the rights owner of the trademark or
other economic entities having the right to use the trademark on the territory of the Russian Federation on
the basis of the contract release
on customs territory of the
Russian Federation, as well as for the prohibition of trafficking on
the territory of the Russian
Federation of goods, the
trademark of which is placed by the copyright holder and that have been put into circulation
outside the Russian
Federation by the right holder
or with his consent»
To amend article 13 of the Agreement “On
uniform principles of regulation in the sphere of protection of intellectual
property rights” in the following manner: «From
the date of entry into force of this change
to the article 13 Agreement, the
Parties enter the following
principle of the exhaustion of
exclusive rights to the
trademark: not violate the exclusive trademark
rights to use the trademark in relation to goods which have been
lawfully introduced into civil circulation directly by the right holder or other persons
with his consent», i.e.,
delete the words «in the
territory of states Parties»
Customs & Corporate Lawyers
BARRIERS THAT HINDER THE FREE MOVEMENT OF GOODS
ON THE TERRITORY OF RUSSIA-BELARUS-KAZAKHSTAN, AND
PROPOSALS FOR REMOVAL THESE BARRIERS
Customs & Corporate Lawyers
The list of barriersNon-recognition national trademark of
the countries-members of CU
Conflicts arising when using retrospective trademarks
The problems with using the mechanism of protection trademarks at the customs border of the CU
Customs & Corporate Lawyers
NON-RECOGNITION NATIONAL
TRADEMARK OF THE COUNTRIES-MEMBERS
OF CU
Customs & Corporate Lawyers
• National trademarks, registered in the national registry of intellectual property, are not recognized on the entire territory of the Customs Union, but only in boards the respective countries. For example, according to article 1479 of Civil code of the Russian Federation the Russian Federation has the exclusive right to a trademark registered by the Federal Executive authority on intellectual property, as well as in cases stipulated by an international Treaty of the Russian Federation. Thus, to ensure the security and protection of the trademark simultaneously in all the countries of the Customs Union, the registration is required in each national authority for intellectual property.
Description of the barrier
Customs & Corporate Lawyers
The influence of the barrier
Additional expenses for producers to protect their copyrights and intellectual property. rights In case of registration only in the national registry of intellectual property rights, the exporter should be similar procedure in another country, which leads to higher expenses
Customs & Corporate Lawyers
Customs & Corporate Lawyers
Proposals on options for the elimination of the identified barrier
From the point of view of elimination of the revealed barrier and taking into account the experience of European Union countries, deserves consideration the proposal of the creation of the Institute of regional trademark of EEA
Mutual recognition of previously registered trademarks in the countries of the Customs Union, with proliferation of such signs provided for by national legislation and protection throughout the EEA
Customs & Corporate Lawyers
CONFLICTS ARISING WHEN USING
RETROSPECTIVE TRADEMARKS
Customs & Corporate Lawyers
• Companies producing in Kazakhstan and Belarus products under the retrospective trademarks may not currently supply in the Russian Federation. This is due to the fact that in accordance with article 1487 of the Civil code of the Russian Federation infringement of the exclusive right to a trademark is the use of that trademark by other persons without the consent of the right holder. Naturally, the owners of retrospective trademarks in Russia do not allow their use by other countries of the Customs Union. The same situation is observed in Belarus and Kazakhstan, in which analogs of the civil code provisions are respectively by the «Law of the Republic of Belarus «On trademarks and service marks» of February 1993 № 2181-XII (article 3) and «Law of the Republic of Kazakhstan «On trademarks, service marks and appellations of origin of goods» dated 26 July 1999 N 456 (article 4). This norm contradicts the provisions of article 13 of the Agreement of 9 December 2010 «On the uniform principles of regulation in the sphere of protection of intellectual property rights», according to which not violate the exclusive trademark rights to use the trademark in relation to goods which have been lawfully introduced into civil circulation on the territory of states Parties directly by the right holder or other persons with his consent
Description of the barrier
Customs & Corporate Lawyers
The influence of the barrier
• Manufacturers of confectionery products
from the Republic of Kazakhstan and the
Republic of Belarus, using retrospective signs, do not
benefit from market expansion through the
creation of a single market. In the Russian Federation
of confectionery consumers do not benefit
from the growing variety of goods and lower prices
Customs & Corporate Lawyers
The experience of the European UnionIn the experience of the EU was not detected cases,
fully match this, for reasons of historical character. However, there was similar precedent case in the practice of European Court of justice, namely the
importation of goods from a country where the use of the trademark is allowed, in the country where its use
is prohibited as «embarrassing» the buyer. In 1996 appeared the proceedings between the wholesaler Fratelli Graffione SNC (hereinafter - «Graffione» and
by Ditta Fransa (hereinafter - «France»), which owned supermarket in one of the cities of Italy. The question was an international group of companies Scott until October 1993 sold in Italy, toilet paper, disposable handkerchiefs under the trade mark «Cotonelle».
However, on the basis of court proceedings between Scott and company Kaysersberg the court of Appeal of Milan was forbidden Scott to use this trademark,
arguing that it may mislead consumers as if it is made of cotton. In the result of similar proceedings in
France and Spain this trade mark has been invalidated
Customs & Corporate Lawyers
Proposals on
options for the
elimination of the
identified barrier
Changes in “On the common
principles of regulation in the field of
protection and enforcement of
intellectual property”
Registration retrospective
trademark as a collective trade
marks of the Customs Union in the name of
voluntary associations of
manufacturers of the Customs
Union countries-members
Retrospective conversion of trademarks
used until 1st of January 1992,
within the same marks of the Customs
Union
Legislative securing of obligations of the owners of retrospective
trademarks to grant non-exclusive royalty-free licenses to these
marks producers (or their successors), producing up to 1st of January 1992 same product with
the same name
Customs & Corporate Lawyers
THE PROBLEMS WITH USING THE MECHANISM OF
PROTECTION TRADEMARKS AT THE CUSTOMS BORDER OF
THE CU
Customs & Corporate Lawyers
• In a Single customs registry of intellectual property objects on the basis of an application of the right holder include objects of intellectual property, subject to legal protection in each member state of the Customs Union. However, there is no objects currently registered in the register of objects of intellectual property. According to some estimates non-use of the proposed mechanism is due to the fact that the right holders, registered trademarks only in one of the countries of the Customs Union deprived of the possibility to protect their rights at the customs border of the CU
Description of the barrier
Customs & Corporate Lawyers
The influence
of the barrier
Formation of the CU led to a change in perimeter of the common customs borders, increase turnover and, respectively, to the growth of imports, including counterfeit products. Before the establishment of the Union, the copyright holders and official importers interested in protection of their interests by the customs authorities sought on the inclusion of trademarks into customs register of intellectual property objects (TROIS). Now, in accordance with the Agreement «On single customs registry of intellectual property of the countries-members of the Customs Union, the common customs register of intellectual property, subject to legal protection in each country-member of the Customs Union
Customs & Corporate Lawyers
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International partnership network of law companies Customs & Corporate Lawyers
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Customs &
Corporate
Lawyers
Bar association Customs &
Corporate Lawyers (Moscow,Russia)
Customs & Corporate Lawyers
Ukraine(Kiev, Ukraine)
Corporate Lawyers Group (CIS)
(Moscow, Russia)
Customs & Сorporate Lawyers
(SPb)(St. Petersburg,
Russia)
Corporate Lawyers Group South Russia
(Rostov-on-Don, Russia) Customs &
Corporate Lawyers Italy (Rome-Milan-
Ancona, Italy)Customs &
Corporate Lawyers North America
(Toronto, Canada)
Bar association
was established on 10 June
2003
51
Representatives of the bar are members of various
expert associations in the field of law, including
members of the Expert Council of the Committee
on budget and taxes of the State Duma of the Federal Assembly of the Russian
Federation, members of the counsel on customs policy of Chamber of commerce and industry of Russia as
well as experts of the Agency for strategic
initiatives at the Government of the Russian
Federation.
Bar association is an Official consultant of International forums and
congresses on intellectual property rights «Expopriority»
Customs & Corporate Lawyers
legal support of foreign trade transactions, including
the examination of all the basic documents required for the assessment of risks
and tax consequences
legal support of business related to the prevention
and pre-trial settlement of conflict situations
trial settlement of disputes connected with application of international and
customs law
representation when considering foreign economic disputes,
including those outside the Russian Federation
protection of rights to objects of intellectual
property
Bar association provides a full range of services in the field of foreign economic activity:
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THANK YOU FOR YOUR ATTENTION!
107045, Russia, Moscow, Rozhdestvensky Boulevard
9, p. 1, of. 320,
Tel. +7 (495) 608-33-43; +7 (495) 608 33 17 (fax), Website: www.customs-advocate.ru
Skype: customsadvocate
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