Two decisions that will improve IP enforcement in Russia
IP owners hope that Russia’s planned IP court will help them enforce their rights more effectively. But recent rulings on parallel imports and damages have also made their job easier
Russia’s new IP Court, set to open in March, will be led by judge Lyudmila Novosyolova – a popular choice among IP practitioners in Moscow – and be staffed by a total of 20 judges. It will include a first instance and appeals court, dealing with cases appealed from the Patent and Trademark Office as well as regional courts.
Two recent cases, however, show that judges have an increasingly good understanding of IP cases and are willing to award higher damages. In one recent trade mark case involving confectionary producer Red October, the plaintiff was awarded $10 million in damages; in a case over books written by Alexander Biliaev, the copyright owner was awarded $250 million.
“In the past it was difficult to get injunctions and compensation for the infringement of IP rights, but that is changing,” says Evgeny Alexandrov of Gorodissky & Partners in a roundtable in this month’s issue of Managing IP.
Rulings in disputes over parallel imports, meanwhile, are heading in brand owners’ favour after years of inconsistency. “It has settled in the past six months,” says Vladimir Biriulin of Gorodissky. “Following a recent case involving BMW in particular, we can now say with certainty that if the trade mark owner wants to block a parallel import, he will be able to do so.”
Other changes in Russia include a Customs union with Kazakhstan and Belarus, opening up the trade borders between the three countries. Tajikistan and Kyrgyzstan are also looking to join.
The countries’ Customs authorities will share a trade mark register, so by registering a mark a brand owner can protect against the import of counterfeits across all members of the union.
“The crucial thing is to register your trade mark and enter it into the Customs register, as in my opinion, Customs as it is now is the most effective enforcement agency in Russia,” says Biriulin.
Elsewhere in the roundtable, Eric Siecker, Caterpillar’s head of IP for EMEA, gives his advice for protecting IP in Russia. He recommends focusing on the protection of trade secrets and watching out for a proposed change by the Anti-Monopoly Service as to how it defines exhaustion.