Enforcing IP rights in Russia – working with Customs
In Russia customs monitoring has proven a valuable weapon in the fight against IP infringement.
When an IP right has been recorded, Customs is obliged to detain any shipments of infringing goods and inform the registrant, giving the IP owner the opportunity to take action before the goods enter the market. Customs monitoring also makes potential infringers aware that the IP owner is actively protecting its rights and serves as a source of information for other law enforcement authorities.
The Customs Register of Intellectual Property Objects (Customs IP Register) is a database of recorded IP, managed by a special department of the Federal Customs Service (FCS). It contains key information including details of the trade mark concerned, the goods in relation to which it is registered, the relevant Customs tariff code (TNVED code), authorised importers, and contact details of the IP owner’s representatives in Russia.
Customs Application Procedure
There are many documents that must be filed in support of a Customs Application in Russia with documents in a foreign language being notarised and certified by Apostille, and translated into Russian.
What differentiates Russia from many countries is that Customs will detain parallel imports. For this reason, it is vital to provide full details of all authorised importers. Customs will detain shipments of goods bearing the trade marks covered by the Application that are being consigned to anyone not listed as an authorised importer.
Counterfeits – you should take action
When Customs identifies a consignment of suspected counterfeit products it should suspend release of the goods and contact the representative of the rights holder. This official notification is usually accompanied by pictures of the goods. The suspension period lasts for ten working days, which can be extended for another ten days at the written request of the rights holder’s representative. Quite often the quality and quantity of pictures and information is not enough to enable identification. In such circumstances, you need to liaise with Customs to obtain better pictures.
If the goods are confirmed to be counterfeit you should then move against the importer. Not doing so will mean that Customs could conclude that detentions are a waste of time and won’t take action in relation to future imports.
If you do act, then Customs may initiate further administrative action. First, a one-month administrative investigation, with possible extension, is undertaken. The matter is then referred to the relevant Court, with the rights holder named as a third party with the entitlement to provide its own position paper on the case, participate in the court hearings to support Customs and appeal an unfavourable decision.
If it accepts the case, the Court will set hearing dates, send official notification to Customs and, if it has been named as a third party, to the rights holder. Once you get a hearing date you need to decide whether to participate directly in the hearings. Where a significant number of goods is involved, the infringer is known to be a large-scale offender, or the region is known to be difficult, the rights owner should participate in all hearings. Where the Court finds infringement, the goods will be confiscated for destruction. In the event of an unfavourable decision, the rights holder or its representatives will be entitled to file an appeal to the relevant Court.
Customs cannot take administrative action in respect of parallels, so the same procedures you would use for counterfeit goods are not available. Instead, the rights holder can file a civil case with the relevant Arbitration Court, naming Customs as a third party and seeking an interim injunction to prevent release of the goods. If the injunction is granted, the consignment is kept with Customs until the final Court decision.
Establishing good working relationships with Customs
Good relations with Customs, combined with ongoing cooperation in relation to enforcement, is essential. A key element of this is appropriate training, enabling Customs to understand the IP involved and identify infringements.
There are training events organised by the FCS around the country. As a rule, rights holders must have a Customs Application in place before they can take part in any of these training sessions. This is an important thing to do not only for your knowledge but also to build awareness.
Dealing with customs is always complex and being well informed and well connected is key to success.