Customs & Corporate Lawyers. Whats new Customs & Corporate Lawyers

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


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



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


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


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


Dynamics of the process of inclusion of intellectual property objects in the customs register of objects of intellectual

property in 2004 - 2012


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


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


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


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


•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


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 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



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.


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


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


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 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


• 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


• 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


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)


PARALLEL IMPORT. EXHAUSTION OF

RIGHTS


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



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


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


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»


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»


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


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»


BARRIERS THAT HINDER THE FREE MOVEMENT OF GOODS

ON THE TERRITORY OF RUSSIA-BELARUS-KAZAKHSTAN, AND

PROPOSALS FOR REMOVAL THESE BARRIERS


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


NON-RECOGNITION NATIONAL

TRADEMARK OF THE COUNTRIES-MEMBERS

OF CU


• 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


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



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


CONFLICTS ARISING WHEN USING

RETROSPECTIVE TRADEMARKS


• 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



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


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


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


THE PROBLEMS WITH USING THE MECHANISM OF

PROTECTION TRADEMARKS AT THE CUSTOMS BORDER OF

THE CU


• 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



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



International partnership network of law companies Customs & Corporate Lawyers


Customs &

Corporate

Lawyers

Bar association Customs &

Corporate Lawyers (Moscow,Russia)


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»


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:


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

The world is fair - while you are with us


http://www.customs-advocate.ru/

Documents

Customs & Corporate Lawyers. Whats new Customs & Corporate Lawyers