Another's proper name or How not to become a smuggler

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.

Concept Talk

To avoid confusion when faced with the new customs reality, suppliers should be familiar with basic intellectual property concepts. One of these is the concept of a trademark . According to Article 1477 of the Civil Code of the Russian Federation, a trademark is defined as a designation used to identify the goods of legal entities and individual entrepreneurs. Incidentally, the term "individualization" is not defined in the law, which sometimes leads to difficulties in understanding the concept of a trademark. If a trademark is registered with the state, it is protected: from then on, no one may use this trademark or similar designations in relation to the goods for which it was registered to identify without the permission of the copyright holder. The same applies to similar goods, for which use of the trademark could lead to confusion with goods bearing the registered trademark. In Russia, a trademark is registered in the State Register of Trademarks and Service Marks of the Russian Federation , and upon registration, the copyright holder is issued a trademark certificate. It contains the rights holder's details, an image of the trademark, an indication of the trademark type, and the types of goods it covers. The certificate also specifies the registration date and expiration date . It's worth noting that a trademark is valid for a specific 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 the International Register maintained by the International Bureau of Intellectual Property are also protected. Applications to the Bureau can be submitted not only by foreign but also by Russian companies, as Russia has been a party to the Madrid Agreement Concerning the International Registration of Marks since 1976, which led to the establishment of the Bureau. Trademarks can also be included in the Unified Customs Register of Intellectual Property of the Member States of the Customs Union , maintained by the Federal Customs Service of the Russian Federation. This register includes trademarks that are subject to legal protection in each of the Customs Union member states, namely, Belarus, Kazakhstan, and Russia. To include a trademark in the Unified Customs Register, the owner must provide a document confirming the security of the obligation or present an insurance policy covering the risk of liability for damage caused to the declarant, owner, recipient of the goods, or other persons due to the suspension of the release of goods. In Russia, the amount of such security for an obligation or the insured amount is no 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.

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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 this article was being prepared for publication, media outlets reported on the possible legalization of importing branded goods without the permission of trademark owners. If the FAS initiative is supported, importers of goods legally purchased abroad but not accompanied by a special document will no longer be considered participants in "parallel imports." Experts predict this will help lower prices and increase demand.