Answer ... Within the framework of civil proceedings, a trademark owner (or its registered/exclusive licensee) is normally entitled to seek the following legal remedies:
- injunctive relief (preliminary and permanent injunctions);
- monetary relief (damages or monetary compensation);
- seizure and destruction of counterfeit goods and related equipment/materials; and
- publication of the court order.
Civil actions are widely used as the most efficient and viable enforcement option to tackle parallel imports and grey-market goods, including trademarked products offered on the Internet, as well as contractual post-termination trademark issues.
In accordance with the applicable (administrative) law, the unlawful use of a trademark shall incur an administrative fine, as well as confiscation of counterfeit goods (and related equipment/materials) for the purpose of destruction.
The illegal use of a trademark may also lead to criminal prosecution (if the infringer’s illegal activities cause substantial damages or if trademark infringement is repeated). The typical statutory criminal sanctions are a criminal fine, forced labour, corrective measures and imprisonment.
Trademark infringement may further constitute an act of unfair competition. Passing off and imitation of trade dress are also treated as unfair behaviour which may be prosecuted. Should the action on unfair competition succeed, the infringer will be forced to cease the illegal activities and pay an administrative fine of up to 0.15% of the infringer’s profits.
Sending a cease-and-desist or demand letter has become a prerequisite for filing a court action in certain instances. In particular, the trademark owner cannot claim damages or monetary compensation in a civil action if it has not first sent a cease-and-desist letter to the infringer.
A trademark can be recorded in the special IP Customs Register to prevent unauthorised importation of parallel imports/counterfeits into Russia.
Answer ... There is no specific definition of ‘dilution’ in either case law or legislation. However, Russian law includes dilution-type cause of actions: either recognition of a trademark as well known or filing of an unfair competition action through the Federal Anti-monopoly Service or its territorial bodies.
In particular, a well-known trademark provides its owner with the following important advantages:
- The legal protection of a well-known trademark is not time limited.
- Protection extends to goods or services of a different kind from those for which the mark is recognised as well known if consumers are likely to associate use of the mark by a third party with the owner of the well-known trademark in a way which might impair its lawful interests.
- Protection of a well-known mark may pre-date the filing date of the respective request for recognition of the mark as well known.
- The commercial value of a well-known trademark is greater than that of an ordinary trademark.
Answer ... In addition to trademark law, unfair competition law – notably, the provisions regarding disparagement/tarnishment and lookalikes – protects against dilution of a trademark.
Answer ... Civil infringement proceedings begin with the trademark owner collecting evidence, drafting a claim and then filing a lawsuit with a court. Russian law does not provide for discovery proceedings. The court will base its decision on the evidence submitted by the parties. Where matters require special knowledge, an independent expert may be appointed by the court. Live testimony is allowed, but not commonly used, as courts prefer to rely on material evidence and written submissions. It normally takes four to six months to obtain a first-instance decision in civil proceedings.
An administrative and criminal enforcement mechanism begins with the filing of a complaint with the police (or public prosecutor). During the proceedings, an independent expert may be appointed by the police investigator. The final decision in an administrative or criminal case is issued by a court. Administrative proceedings usually take about three to four months, whereas criminal proceedings usually take about one to two years.
Answer ... The most common defences are:
- expiry of the statutory limitation period;
- fair use;
- in cases involving individuals, personal circumstances (e.g., financial standing, age);
- abuse of rights – a legal ground for the court to dismiss the infringement action (e.g., where the trademark owner does not use the trademark and the only purpose of filing suit is to inflict harm on a competitor);
- non-infringement (eg, challenging the evidence); and
- initiation of an invalidation action against the trademark. An invalidation action is considered by the Federal Service for Intellectual Property (Rospatent) and does not constitute grounds for the court to postpone or suspend the infringement proceedings.
Trademark infringement litigation and invalidation cases are independent from each other. The defendant may also initiate an unfair competition action, claiming that obtaining trademark registration and suing for infringement constitute acts of unfair competition (e.g., where a trademark is registered by a distributor or other third party with the aim of preventing the producer of genuine goods from distributing its goods on the Russian market).
Answer ... If no appeal is filed, the decision enters into force in one month. A decision of the Court of Appeals enters into force as of the date on which it is issued in writing and may be appealed to the IP Court within two months. A decision of the IP Court can be appealed to the Economic Collegium of the Supreme Court within two months; its decision can in turn be appealed within three months to the Presidium of the Supreme Court.
The courts of first instance consider trademark infringement cases on the merits. One judge will hear the case. The first-instance decision will enter into force one month after the date of issuance of the court ruling, provided that it is not appealed.
If the ruling is appealed, a panel of three judges will hear the appeal. The appeal should be decided within two months, although this term can be extended in complex cases. The ruling of the court of appeal will enter into force from the date of adoption and can be appealed before the IP Court (as court of second (cassation) appeal for trademark infringement disputes) within two months.
The ruling of the IP Court will enter into force from the date of its adoption. It may be further appealed before the Supreme Court of the Russian Federation (as court of second cassation), and a supervisory appeal can be filed with the Presidium of the Supreme Court of the Russian Federation.