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Although the introduction of the IP register of the Eurasian Customs Union is already established, the member states have so far failed to implement it in practice. Therefore, trademarks still have to be separately registered in all national customs registers of the Eurasian Customs Union member states, including Russia.
Registration of a trademark at the Russian customs is an efficient tool to fight counterfeiting. The register of IP rights is an open database, which is regularly updated. The import or export of counterfeit products is immediately blocked by the customs authorities, which stimulates the growth of legal sales.
The customs procedures are very clear: when goods that have signs of counterfeiting are detected (for example, import by an unauthorised importer), customs authorities suspend the clearance of goods for ten business days and contact the trademark owner.
"Including a trademark in the customs register in Russia helps to prevent trademark violations and illegal sales."
this period the trademark owner has an opportunity to get information on the circumstances of the import of goods and the importer, obtain a description and photographs of the goods, and even get a sample. If the owner confirms that the suspended goods are counterfeited, the customs begins an administrative investigation against the importer.
Inclusion of trademarks in the customs register helps not only to effectively identify goods illegally imported to Russia but also to reveal counterfeiting in the domestic market. This occurs during interaction between customs and other law enforcement agencies.
In 2019, the customs register contained 5,141 IP objects. In 2019 the Russian customs has revealed 11 million counterfeited goods. The most commonly counterfeited goods are clothing, games and toys, and shoes. A recent trend in Russia is the growth of counterfeit jewellery products.
Instagram is a common marketplace for selling the counterfeit goods and usually the trademarks are not included in the customs register. Geographically, the countries from which the counterfeit goods are imported cover a wide area.
At first glance the procedure of the recordal of trademarks in the customs register is quite simple. The minimum list of documents to be attached to the application for custom recordal in Russia includes:
• A power of attorney;
• An extract from the company register;
• A detailed description of the IP object and original goods;
• Samples or images of original goods;
• A written obligation of the applicant to cover all expenses of customs authorities and damage caused to the owner of suspended goods in case the infringement will not be confirmed; and
• A copy of a civil liability insurance to cover damages.
All documents must be translated into Russian. The translations and copies of the documents must be notarised.
There are no official fees. The trademark owner must sign an obligation to compensate for losses to the right owner/declarant/recipient of the goods. In addition, the trademark owner is entitled to provide an insurance agreement. The amount of insurance should be no less than 300,000 RUB ($3,759).
Despite the simplicity of the process, trademark owners usually face difficulties when applying to the customs.
According to regulations, the customs should consider the request within 30 working days. In practice it usually takes three to four months. There are no clear rules on how the documents should be executed, and thus repeated additional enquiries from the customs are possible.
The timeframe to provide a response to a customs enquiry is one month. If the trademark owner does not provide a response, the application may be denied. Applicants should be ready to provide clarification and additional information to the customs very quickly.
The biggest challenge, especially for foreign companies, is that Russian customs requires documents confirming the possible violation of IP rights in connection with the importation of counterfeit products as well as photographs or samples of counterfeit goods.
Trademark owners should collect as much information as possible about the counterfeit. If the company does not have evidence of the illegal import into Russia of the products labelled with its trademark, the trademark will not be registered in the customs register.
Including a trademark in the customs register in Russia helps to prevent trademark violations and illegal sales, but trademark owners should be ready to face difficulties during the registration process.
Annikki Hämäläinen is a trademark attorney at Papula-Nevinpat. She can be contacted at: firstname.lastname@example.org
Russia, Annikki Hämäläinen of Papula-Nevinpat, customs, Eurasian Customs Union, trademark owners, brand protection, counterfeits