The fight against counterfeit goods has become such an important and large-scale task in Russia that now it can affect even those who import unique rather than fake goods into the country. And if the patterns on imported shoes, albeit remotely, but resemble the proprietary monogram of the Louis Vuitton brand, and the sole is painted in a color close to red, then get ready for questions at the customs. How to protect yourself from problems at the border, says the general director of the company "VSN-Transit", Natalia Rudkovskaya.
After the government approved the Strategy for the development of the Customs Service of the Russian Federation until the 2013 year at the end of December 2020, in which the protection of intellectual property was recognized as one of the main goals, in addition to services checking outlets, Russian customs also joined the fight against counterfeiting. From the first steps in eradicating fakes, it became clear how many difficulties the protection of intellectual property caused by customs officers and participants in foreign economic activity.
In order not to be confused, faced with a new customs reality, the supplier should be familiar with the basic concepts from the field of intellectual property. One of them is the concept of trademark. According to article 1477 of the Civil Code of the Russian Federation, a trademark is a designation that serves to individualize the goods of legal entities and individual entrepreneurs. By the way, the term “individualization” is not explained in the law, which sometimes causes difficulties in understanding the concept of a trademark. If a trademark has passed state registration, it falls under protection: from now on, no one is entitled without the permission of the copyright holder to use this trademark or similar designations in relation to the goods for which it was registered for individualization. The same applies to homogeneous products in respect of which the use of a trademark may result in confusion with goods under a registered trademark. In Russia, a trademark is registered in State Register of Trademarks and Service Marks of the Russian Federation, and as a result of registration, the copyright holder is issued a certificate for a trademark. It indicates the details of the copyright holder, the image of the trademark, an indication of the type of trademark and views goods to which it applies. The certificate also contains the registration date and date expiration registration deadline. It is worth paying attention to the fact that a trademark is valid for a certain period of time and applies to a specific class of goods.
In addition to the State Register of Trademarks and Service Marks of the Russian Federation, trademarks registered in International registrycompiled by the International Bureau of Intellectual Property. An application to the Bureau can be submitted not only by foreign, but also Russian companies, since since 1976, Russia has been a party to the Madrid Agreement Concerning the International Registration of Marks, as a result of which the Bureau was organized. Also, trademarks may be added to Unified Customs Register of Intellectual Property of the Member States of the Customs Unionmaintained by the Federal Customs Service of the Russian Federation. It includes objects that are subject to legal protection in each of the member states of the Customs Union, that is, in Belarus, Kazakhstan and Russia. To include a trademark in the Unified Customs Register, the copyright holder must submit a document that confirms the security of the obligation, or present a liability risk insurance contract for harm to the declarant, owner, recipient of goods or other persons in connection with the suspension of release of goods. In Russia, the amount of such security for an obligation or the insurance amount is not less than 300 000 rubles.
At customs, all goods are checked for signs of trademarks entered in the register. At the end of the 2012 year, there were about 2,6 thousand of such trademarks in the register, and among them were trademarks of both Russian and foreign companies. If during the inspection there is a suspicion that intellectual property rights are violated, the goods are detained at customs for 10 working days. During this time, the request is sent to the copyright holder, to which he is obliged to respond in writing. If no response to the request has been received, the customs body independently makes a decision on the release of goods and can even arrange an examination for similarity with a registered trademark. But more often than not, the copyright holder or his representative is still responsible to customs, and if the rights are really violated, the trademark owner asks to ban the release of fake goods, confiscate it and compensate the specific damage to the copyright holder. A participant in foreign economic activity in this case bears not only administrative responsibility for the illegal use of a trademark (article 14.10 of the Administrative Code of the Russian Federation), but also criminal (article 180 of the Criminal Code of the Russian Federation) and will be responsible in court.
However, customs has the right to detain the goods without a statement from the copyright holder and to suspend its release even if the product shows signs of a trademark that is not included in one of the listed registries (based on paragraph 4 of article 331 of the Customs Union and article 308 of Federal Law “ About customs regulation in the Russian Federation "). This is possible because not all registered trademarks are listed in any registry. Therefore, one cannot be sure that if information on TK is not available in the register, it is not registered and legal protection is not provided to it.
Three steps to a good name
What can a participant in foreign economic activity do to protect himself from problems at the border? Firstly, if the product is not accompanied by the documents of the copyright holder, it will not be superfluous to turn to patent attorneys and order a study on the similarity of trademarks from them. Such an examination should be carried out not only then, when the goods have already been detained at customs and the case is threatened by the court, but also at the stage prior to transportation. Sometimes it happens that the supplier of the goods does not inform his partner that the product has any labels and signs that fall under the protection of the trademark. But, as you know, ignorance does not exempt from liability, and in order not to lose the goods during the trial or forever, it is advisable to check in advance that the inscriptions and figures on the product belong to any registers.
If as a result of the examination it turned out that the drawings or inscriptions on the product are similar to the already registered trademarks, find out the owners of these marks and ask them to give you a letter saying that they do not mind the delivery of this product to the territory of the Russian Federation. You can also conclude a license agreement with the copyright holder to use this mark or image on the product. Strictly speaking, only the license agreement enjoys the official right to protect the goods, but the customs so far meets Russian businessmen and accepts letters from copyright holders, sometimes checking them, however, for authenticity.
Finally, in order to prevent any surprises in the form of the sudden presence on the product of foreign trademarks and the discrepancy of the goods with what is indicated in the accompanying documents, use your right to pre-search the goods before submitting the declaration. This is the only method of protection against unpleasant surprises and, as a consequence, confiscation of goods, as well as violations of the law.
PS: While the article was being prepared for publication, the news appeared in the media about the possible legalization of the import of branded goods without the permission of the trademark owners. If the FAS initiative in this regard is supported, importers of goods legally purchased abroad, but not supplemented by a special document, will no longer be considered participants in “parallel imports”. According to experts, this will help lower prices and increase demand.
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