адрес для посетителей:
Mariahilfplatz 3
81541 Munich

почтовый адрес:
P.O. Box 95 01 60
81517 Munich

Tel: +49-89-45 92 20
Fax: +49-89-48 20 58
E-Mail:
office@euromarkpat.com

 

Архив новостей

22.07.2016
Архив новостей, Российская Федерация

Protection of Intellectual Property rights by Customs Measures in the Russian Federation

after establishment of the Customs Union between Russia, Belarus and Kazakhstan


The Eurasian Economic Community

On May 30, 2001, the Treaty on the Establishment of Eurasian Economic Community came into force.  The Eurasian Economic Community (EurASEC) is an international organization created by the member states to form a Customs Union and Common Economic Area.  The member states of the organization are Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan and Uzbekistan. Ukraine, Moldova and Armenia have the status of observers.

Customs Union between Russia, Belarus, Kazakhstan

The first stage in the formation of EurASEC is the establishment of the Customs Union between Russia, Belarus and Kazakhstan, which was formalized by the signature of the Treaty on the Establishment of an Integrated Customs Area and the Formation of a Customs Union on October 6, 2010.

The Customs Union is an integrated customs area with a common customs territory in which goods move freely and are exempt from customs duties and economic restrictions except for anti-dumping and compensatory measures. Member states apply a unified customs tariff and other unified measures.

a) Unified Regulation on Principles of Protection and Enforcement of Intellectual Property

On July 11, 2011, the Agreement on Unified Regulation on Principles of Protection and Enforcement of Intellectual Property (Agreement) was ratified, which came into force on January 1, 2012. One important change was the establishment of the principle of regional exhaustion for trademarks.

Before the Agreement was adopted, Russia and Belarus applied the principle of national exhaustion of trademark rights and Kazakhstan applied the principle of international exhaustion.

According to Article 13 of the Agreement, the Parties introduce the following principle of exhaustion of exclusive rights on a trademark: Use of a trademark with respect to goods which have been lawfully introduced into the market in the territory of the Parties' states by the right holder or by others with his consent shall not be deemed to be an infringement of the exclusive trademark rights.

b) Customs Measures

The Customs Code of the Customs Union came into force on July 6, 2010 (Customs Code of the Union).  After the Customs Code of the Union came into force the Russian Customs Code was abolished and the Law on Customs Regulation in the Russian Federation was adopted. The Customs Code of Kazakhstan was brought into compliance with the Customs Code of the Union. The Customs Code of Belarus is valid insofar as it does not conflict with the Customs Code of the Union.

Russian Federation:

The customs measures in relation to goods which contain objects of intellectual property rights (IP objects) are regulated in Chapter 46 of the Customs Code of the Union and Chapter 42 of the “Law on Customs Regulation in the Russian Federation” No. 311 of November 27, 2010, last amended on December 6, 2011 (Law on Customs Regulation).

According to Article 305 of the Law on Customs Regulation, measures on protection of intellectual property rights are applied in relation to goods which contain objects of copyright and neighboring rights, trademarks, service marks and appellations of origin which are included into the Customs Register of objects of intellectual property upon request of the right holder.

According to Article 328 of the Customs Code of the Union, customs measures are not applied to goods which contain IP rights and are transported across the border: by natural persons for personal use, in particular goods which are sent by international mail to their address, goods which are transported in accordance with the procedure of customs transit, goods which are transported by diplomatic representations, consulates, other official representations of foreign countries, international organizations and institutions for official  and personal use.

A right holder who has sufficient grounds to believe that an infringement may take place in connection with the import or export of goods is entitled to file with the customs authorities an application on inclusion of the corresponding IP object into the Customs Register of IP objects. The application for inclusion of an IP object into the national Customs Register of a member state is filed by the right holder with the corresponding customs authority.  The Customs Code of the Union contains provisions concerning the inclusion of an IP object into a unified Customs Register, which has not been established yet. The term of registration of the IP object in the Customs Register cannot be more than two years. It can be extended an unlimited number of times but each time no longer than for two years (Art. 329 Customs Code of the Union).

The application for inclusion of an IP object into the Customs Register should contain the following information:

  1. on the right holder and the representative
  2. on the IP object
  3. on goods that are exported from or imported into the Russian Federation sufficient for the customs authorities to trace such goods
  4. on the term during which the customs authorities should take measures


A document confirming the right to the IP object(s) should be enclosed with the application. This document can be the trademark certificate, an assignment agreement, an exclusive license agreement, or other documents confirming the applicant's rights to an IP object. If a representative files the application, a power of attorney from the right holder should be enclosed; samples of counterfeit goods may also be enclosed. 

There are no fees for including an IP right into the Customs Register. The applicant must enclose a signed undertaking for remuneration of damages which may be caused to the owner or the recipient of the goods or to other parties by the suspension of the goods. Instead of an undertaking a right holder may also file an insurance policy. The sum of the undertaking or policy must be not less than 300.000 Rubles.

If the customs authorities reveal indications of an infringement of IP rights, release of the goods will be suspended for 10 days.  An extension of term can be requested, but not longer than for 10 days, if the right holder has taken action for the protection of his IP rights with the competent organs. Upon expiration of this term the goods will be released, unless the right holder files documents ordering the further detention or confiscation of the goods, for example a corresponding court order or court decision. If a corresponding court decision is filed, the goods are seized or destroyed  (Customs Code of the Customs Union).

According to Art. 308 of the Law on Customs Regulation "the Customs authorities are authorized to suspend the release of goods containing IP objects which are not included in the Register if there are indications of an IP infringement and information on the right holder (or his representative) in Russia is available".

The goods may be suspended for 7 days. Upon suspension of the release of the goods the customs authorities inform the right holder and the possessor of the goods.  The term of suspension can be extended for 10 more days if the right holder has applied for registration of his IP right with customs. If within said term no decision ordering the confiscation of the goods by a competent organ is taken, the goods are released (Law on Customs Regulation).

Based on the Code of Administrative Offences the customs authorities may suspend the release of goods if they believe there is an infringement and initiate legal proceedings based on trademark infringement. In case the release of the goods is suspended, the customs authorities contact the right holder and request information in order to clarify whether an infringement took place.

Nicolai von  Füner,  Partner
Ekaterina Kazankova, LL.M., Russian Attorney