Intellectual Property FAQ
Litigation - Trademark Enforcement
1. Trademark enforcement proceedings
Any infringement or illegal use of a trademark may be challenged in civil, administrative or criminal proceedings under the law of the Russian Federation.
To enforce trademark rights against an infringer, the following proceedings are available in the Russian Federation:
- civil law: recognition of trademark rights; compensation for damage or losses includes lost profits or compensatory payment in an amount from 10,000 rubles (about 270 euro) to 5 million rubles (about 140,000 euro); removal from circulation and destruction of infringing articles at the expense of the infringer of the counterfeit goods;
- administrative law: the illegal use of a trademark may be qualified as act of unfair competition and may be prohibited administratively by the Federal Anti-monopoly Committee and punished by fines in an amount from 30,000 rubles (about 850 euro) to 40,000 (about 1,100 euro) for legal entities;
- customs law: prohibition of imported or exported counterfeit or parallel import goods; or
- criminal law: the illegal use of a trademark or strikingly similar mark may be prosecuted if the violation has been ongoing or repetitive, or has caused major damage, and may be punished by penalties in an amount up to 200,000 rubles (about 5500 euro) or five years of imprisonment.
In the Russian Federation, there are no specialised courts or tribunals for trademark infringement.
2. Procedural format and timing
In most cases relating to trademark infringements, the disputes are to be handled in an arbitrage court (a commercial court in the Russian Federation). There is a time limit for the duration of the proceedings. After bringing an action into arbitrage court, the first stage must carry on for no more than three months. Arbitrage decisions may be appealed at the appeal stage of arbitrage. The third stage is an appeal to the Court of Cassation, and the final stage is an appeal to the High Arbitration Court.
Depending on the circumstances of the case, the full proceeding in all of the stages can take from half a year to two years to complete.
Before and during the hearing, the claimant is allowed in order to provide as much evidence as possible to prove the culpability of the infringer. Live testimony may also be introduced. Expert review and testimony may also be initiated by both parties, but it must first be ordered by the judge.
Criminal proceedings are the most powerful legal instrument in instances of trademark infringement. Criminal proceedings have the following stages: preliminary investigation, commencement of the proceeding, inquiry by the Prosecutor's Office or interior ministry agencies (Militsia), investigating action, arraignment and description of indictment and preparation of case materials for transfer to court.
3. Burden of proof
Under the Russian trademark law, the plaintiff has the initial burden of proof, i.e. the plaintiff must establish and prove infringement. The plaintiff has the burden of proving the following:
- the validity and ownership of trademark rights;
- plaintiff's prior rights to the trademark; and
- the existence of a likelihood of confusion between the marks.
Regarding establishment of an infringement, the following facts and documents should be taken into consideration:
- any exclusive right to a trademark, which should be proved by a trademark certificate issued in the name of trademark owner;
- the inability of a potential infringer to provide ('juridical' feature of infringement) documents confirming their right to the use of the trademark (including assignment deeds or license agreements, which are properly registered with Rospatent);
- the identity or similarity of the registered trademark with the infringer's mark;
- a similarity of goods or services on which the infringer's mark is used; and
- difference(s) between the goods produced by the alleged infringer and by the trademark owner ('technical' feature of counterfeiting).
There is no cause of action for dilution under Russian law.
4. Third-party opposition
May a third party oppose registration, or seek cancellation of the trademark or service mark? What is the primary basis for such challenges, and what is the procedure?
Yes, a third party may oppose registration or seek cancellation of a trademark or service mark registration. Trademark registrations may be contested and recognized as invalid, in the following circumstances:
- If legal protection was granted in violation of any of the absolute bases upon which registration of state trademark registration could be refused, a third party may, throughout the course of the period of validity the exclusive right to a trademark, fully or partially oppose the registration or seek cancellation;
- If legal protection was granted in violation of novelty grounds for rejection of registration, a third party may, in the course of five years from the date of publication of information on the state registration of the trademark in the Official Gazette, fully or partially oppose the registration or seek cancellation;
- If legal protection was granted in the name of an owner that is not a legal entity or an individual entrepreneur, a third party may, in the course of the whole time period of validity of the exclusive right to a trademark, fully oppose the registration or seek cancellation;
- If the priority of the trademark was later than the date of recognition of another registered trademark as a well-known mark, a third party may, in the course of the whole time period of validity, fully oppose the registration or seek cancellation;
- If registration was granted to an agent or a representative of a person who is the holder of this trademark in one of the member states of the Paris Convention, the third party may, in the course of the whole time period of validity of the exclusive right to a trademark, fully oppose the registration or seek cancellation;
- If any actions of the rights-holder connected with the state registration of the trademark constitute an abuse of right or unfair competition, the third party may, in the course of the whole time period of validity, fully or partially oppose the registration or seek cancellation; or
- If registration was granted in violation of the requirements established for well-known trademarks, the third party may, in the course of the whole time of validity of the exclusive right to the well-known trademark, fully or partially oppose the registration or seek cancellation.
The legal protection of a patented trademark may be contested by any interested party on the bases mentioned above by filing of an objection against such a patented trademark with the Chamber of Patent Disputes or with Rospatent. In instance of appeals, the decisions of Rospatent may be disputed in an Appeal court.
If registration of such a trademark is recognized as fully invalid, the trademark certificate and the record in the state register of trademarks shall be annulled.
5. Discovery
The following discovery devices are available in obtaining evidence from parties, other than the trademark owner or licensee:
- petition to the court for an order for evidence;
- interrogation (in criminal proceedings); and
- operative search activity (in criminal proceedings).
6. Timing
The first criminal proceeding in court takes from three months to one year. The appeal and cassation stage, may each take approximately one year as well. The three court proceedings, may take up to two years.
7. Litigation costs
The typical range of costs associated with an infringement action varies from 5,000 euro to 15,000 euro per case, depending on the complexity of a particular case.
In accordance with Russian Code of Civil Procedure (Articles 98-100), the winning party can recover their court expenses, such as the costs for experts, witnesses, translators, as well as for representatives. However, the court estimates the cost of representatives' in "reasonable limits", which is usually considerably smaller than they actually are.
8. Appeals
Decisions of the first trial can be appealed in two separate courts. The first, the appellate stage should be filed within one month from the date of the first trial's final decision. The appeal stage must be completed within a month from the date when the appeal is filed.
An appeal in the Court of Cassation, which is the third stage of commercial court proceedings, should be filed within two months of the appeal hearing. This stage is supposed to be final; however, the case can be additionally reviewed by the Supreme Arbitrage court. Proceedings in the Supreme Arbitrage court last about half a year.
Litigation
