Legal IP Protection in International Trade

Judicial and extrajudicial protection of intellectual property when exporting and importing goods

legal support under the law of the eurasian economic union

Intellectual property is the result of intellectual activity, as well as the personal non-property rights of the copyright holder to the result of intellectual activity or means of individualization. Intellectual property is protected by law. A private person or legal entity that has an exclusive right to IP has the right to use such IP at its own discretion in any way that does not contradict the law.

By virtue of Article 1252 of the Civil Code of the Russian Federation, the protection of IP rights to the results of intellectual activity and to means of individualization is carried out, in particular, by presenting in the prescribed manner the claim on:

  1. recognition of a right – to a person who denies or otherwise does not recognize the right, thereby violating the interests of the right holder;
  2. suppression of actions that violate the right or create a threat of its violation – to the person committing such actions or making the necessary preparations for them, as well as to other persons who can stop such actions;
  3. compensation of losses – to a person who has unlawfully used the result of intellectual activity or a means of individualization without concluding an agreement with the copyright holder (non-contractual use) or who has otherwise violated his exclusive right and caused him damage, including violating his right to remuneration;
  4. seizure of a material medium – to its manufacturer, importer, custodian, carrier, seller, other distributor, dishonest purchaser;
  5. publication of a court decision on a violation, indicating the actual copyright holder - to the violator of the exclusive right.

In accordance with Article 1251 of the Civil Code of the Russian Federation, in the event of a violation of the author’s personal non-property rights, their protection is carried out by:

  1. recognizing the right;
  2. restoration of the situation that existed before the violation of the right;
  3. suppression of actions that violate the right or create a threat of its violation;
  4. compensation for moral damage;
  5. publication of a court decision on a violation.

Common cases of violation of intellectual property rights include: export of goods in violation of intellectual rights, production of goods using patented inventions/developments, plagiarism, copying, for example, software, etc.

At the same time, it is important to note that in accordance with Article 124 of the EAEU Customs Code, if, during customs operations, the customs authority finds signs of violation of the rights of the copyright holder to intellectual property, the release period for such goods is suspended for 10 working days. At the same time, the Board of the Eurasian Economic Commission, by Decision dated March 6, 2018 No. 35 “On maintaining a unified customs register of intellectual property objects of the member states of the Eurasian Economic Union”, approved the Regulations for maintaining a unified customs register of intellectual property objects.

The political situation in the world has significantly changed foreign economic activity, including issues related to intellectual property. Federal Law No. 46-FZ 03/08/2022 “On Amendments to Certain Legislative Acts of the Russian Federation” established that the Government of the Russian Federation in 2022, 2023 and 2024 has the right to make decisions providing for a list of goods (groups of goods) in respect of which Certain provisions of the Civil Code of the Russian Federation on the protection of exclusive rights to the results of intellectual activity expressed in such goods and the means of individualization with which such goods are marked cannot be applied.

Parallel imports, as a general rule, are not permitted, but, given the current political circumstances, importers were exempted from liability for the import of original goods marked with the trademark of the copyright holder without his permission.

In particular, by order of the Ministry of Industry and Trade of Russia dated July 21, 2023 No. 2701, the List of goods (groups of goods) to which the provisions of Articles 1252, 1254, paragraph 5 of Article 1286.1, Articles 1301, 1311, 1406.1, subparagraph 1 of Article 1446, Articles 1472 are not applied, 1515 and 1537 of the Civil Code of the Russian Federation, subject to the introduction of these goods (groups of goods) into circulation outside the territory of the Russian Federation by right holders (patent holders), as well as with their consent”.

The reasons for the legalization of parallel imports in Russia were economic sanctions introduced by unfriendly states, according to which a large number of goods were prohibited from direct import into Russian territory. In this regard, regulations were adopted allowing the import of goods without obtaining the consent of the copyright holder. In most cases, goods imported in this way include goods necessary for industrial production or for a specific sector of the economy. The main goal of parallel imports is to avoid commodity shortages.

Customs authorities take measures to protect rights to intellectual property when placing goods under customs procedures, with the exception of placing goods under the customs procedure of customs transit, the customs destruction procedure, as well as a special customs procedure. Measures to protect rights to intellectual property taken by customs authorities do not exclude the right of the copyright holder to apply any other means of protection in accordance with the legislation of the Member States and international treaties of the Member States with a third party.

Inclusion of intellectual property objects in the unified customs register

One of the ways to protect intellectual property objects is to include them in the customs register of intellectual property objects, which includes objects of copyright and related rights, trademarks (service marks), appellations of origin of goods and geographical indications, in respect of which the federal executive body, carrying out functions of control and supervision in the field of customs affairs, a decision was made to include them in the customs register or a preliminary decision was made to include an object of intellectual property in the customs register.

The FCS established the procedure for maintaining the customs register of intellectual property objects, the form and procedure for filling it out by order of the Federal Customs Service of Russia dated January 28, 2019 No. 131 “On approval of the Administrative Regulations of the Federal Customs Service for the provision of public services for maintaining the customs register of intellectual property objects”.

Export suspension due to intellectual property violation

The release of goods containing objects of intellectual property is carried out by customs authorities, while the Federal Customs Service maintains a customs register of objects of intellectual property. On the territory of the EAEU, a unified customs register is maintained on the basis of the Decision of the Board of the Eurasian Economic Commission dated March 6, 2018 No. 35 “On maintaining a unified customs register of intellectual property objects of the member states of the Eurasian Economic Union.” Objects of intellectual property that can be included in the unified customs register of intellectual property objects of the Member States include objects of copyright and related rights, trademarks, service marks and appellations of origin of goods.

A copyright holder who has reasonable grounds to believe that there may be a violation of his rights to intellectual property objects has the right to submit an application to include the intellectual property object in the Unified Customs Register of Intellectual Property Objects of the EAEU Member States. The application shall be accompanied by documents confirming the existence of the right to intellectual property in each Member State (certificates, agreements, including transfer of rights and licenses, and other documents that the copyright holder can submit to confirm his rights to intellectual property in each state). member in accordance with its legislation), as well as documents confirming the information to be indicated in the application. Samples of goods may be attached to the application, which can serve as confirmation of the existing, in the opinion of the copyright holder or a person representing the interests of the copyright holder (several copyright holders), fact of violation of his rights to intellectual property.

If, during customs operations related to the placement of goods containing intellectual property objects under customs procedures, signs of violation of the rights of the copyright holder to intellectual property objects are detected, the release period for such goods is suspended. Decisions to suspend the period for the release of goods and to extend the period of suspension of the period for the release of goods are made by the head (chief) of the customs authority or a person authorized by him.

Upon expiration of the suspension period for the release of goods containing objects of intellectual property, the period for the release of such goods is resumed, except for cases where the customs authority is presented with documents confirming the seizure of goods, seizure or confiscation of them, or other documents in accordance with the legislation of the state-member. Customs authorities have the right to suspend the release of goods containing intellectual property objects that are not included in the unified customs register of intellectual property objects of the Member States or the national customs register of intellectual property objects, which is maintained by the customs authority of the Member State on whose territory the goods are placed under customs procedures, without a statement from the copyright holder in accordance with the legislation of the Member States on customs regulation.

The period of protection of rights to intellectual property objects by customs authorities is established when intellectual property objects are included in the unified customs register of intellectual property objects of the Member States, taking into account the period specified by the copyright holder in the application, as well as the validity period of the documents attached to the application, but cannot be more than 2 years from the date of inclusion in such a register.

Administrative protection of intellectual property

Carrying out customs control when importing and exporting goods is accompanied not only by customs clearance of the goods, but also by checking for violation of intellectual property rights, among other things. Based on the results of such an audit, violations of intellectual property rights may be identified, for which administrative liability is provided in accordance with the Administrative Code, for instance:

  1. Article 7.12. Violation of copyright and related rights, invention and patent rights.
  2. Article 7.28. Violation of the established procedure for patenting industrial property in foreign countries.
  3. Article 14.10. Illegal use of means of individualization of goods (works, services).

Knowledge of intellectual property rights, methods and mechanisms for their protection allows businesses to focus on conducting business activities in compliance with all established regulatory requirements, as well as protect your rights from being used by other participants of international trade.

Legal services

  1. Consulting on legal protection of intellectual property in foreign economic activity and issues of parallel import of goods
  2. Legal IP protection for parallel importation
  3. Support of inclusion in the unified customs register of intellectual property objects
  4. Preparation of documents for the protection of IP rights
  5. Legal representation on issues of protection of IP rights with foreign partners and in the courts.

How do we work?

01.
You send us a request to
e-mail info@brace-lf.com 
or call on +7 (499) 755-56-50
02.
Preliminary analysis and
initial consultation
03.
Conclusion of legal services agreement
04.
Project work
05.
On each stage we inform you about results
06.
We provide the result and prepared documents
E-mail
info@brace-lf.com

Send us a request with a detailed description of the issue.

Our phone
+ 7 (499) 755-56-50

Contact us by phone.

Clients and partners