Hogan Lovells

Hogan Lovells' LimeGreen IP

The site will give you an overview of Intellectual Property law and related procedures, and how these may differ from country to country.

Trademarks - Anti-counterfeiting: Customs watch applications - Russia

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-Are there any fees or local procedural requirements?

There are no mandatory state fees.

Insurance fees:

  • There is an insurance premium under the insurance agreement as a guarantee for security. The amount depends on the exact trademarks (generally about EUR 400 for 3 trademarks).  The total amount securing the insurance coverage should not be lower than RUR 300,000, currently about EURO 5,5k.

-How do you register a customs watch application?

An IP recordal application should be filed with the Russian Federal Customs Service (the FCS) supplemented by a number of documents in hard copies. One application may refer to several IP rights of the same type registered in the name of the applicant.

-How long does it take and what is the term of protection?

If the required documents are in order the application procedure is usually completed in 30 days (however, in practice, this term is extended by the FCS examiners)..

Customs recordals could be filed for a maximum of 2 years, subject to FCS approval (e.g. if the trademarks are new to the Register it is possible that only a 1 year term is approved as first).

-If filing on behalf of a subsidiary of the IP rights holder what evidence of connection to the parent company is required?

Customs application can only be filed on behalf of the trademark owner.

-Is a local agent required? If so, is a power of attorney required?

Appointing a local agent (e.g. a technical or administrative contact) is not specifically required by the relevant Russian law. Practically, however, it is necessary to include information about such agent(s) in the customs applications to allow the customs officials to address their inquiries to the relevant person(s). If a local agent or a legal representative is appointed to assist with the customs application formalities, a power of attorney is mandatory (legalised and notarized).

A power of attorney is required when:

  • Outside counsel prepare a client's customs watch application and represent the client before the FCS and local customs offices;
  • The client confirms the need for a contact person for more technical authorisation issues (usually from the client's Russian subsidiary).

-What documentation is required or recommended?

The application should contain:

  • Certificate of incorporation of the trademark owner or the extract from the trade register confirming registration and corporate existence of the trademark owner
  • Trademark validity confirmations as obtained from the Russian PTO and/or WIPO, for Russian trademark registrations soft copies of the trademark certificate with annexes (if any) would be also sufficient
  • Power of attorney for outside cousel or contact person(s)
  • Simple copies of passports of contact persons
  • Guarantee letter on recovery of damage from the trademark owner
  • Security for the amount of not less than 300,000 Rubles (about EUR 5,5k) ensuring the performance by the trademark owner of its obligations under a guarantee letter, namely the guarantee provided by a Russian bank or a Russian insurance company
  • Information on counterfeit products, ways of importing of these products into Russia (e.g. in a form of a presentation, brochure or in any other form).
  • Documents confirming introduction of genuine goods into the territory of the Russian Federation (i.e. customs declaration, contract with the licensees, screen-shot of the web-site showing offer for sale, price list, etc.).
  • List of authorised importers (Name, Taxpayer Identification Number and Address should be provided)
  • Customs codes applied for customs clearance of relevant goods imported into Russia under the Commodity Classifier for Foreign Economic Activities of the Customs Code of Customs Union.

Whilst it is possible to record an unlimited number of trademarks the applicant wishes to be watched, information on counterfeits for all such trademarks is required.

All documents provided by the applicant are required to be legalized and notarized if executed abroad.

-What level of understanding of IP rights is available from customs? Are additional procedures or training required?

Customs officers are trained internally to identify IPRs (namely, trademarks and copyrights) based on the ICS Register. To increase the likelihood of seizing counterfeits of our clients' products, we assist in organising training and meetings with customs officials. Such training includes information on packaging, suspicious shipment destinations, and other advice. There are also Regional and Federal Russian Customs Seminars held from time to time.

-When customs report on a finding how long does the rights holder have to respond and what steps are required to ensure non-release of counterfeit goods?

Generally, rights holders have 10 working days from receipt of the customs notice to decide whether to release the goods or take appropriate action.

In case of ex-officio requests (where the trademarks are not recorded with the FCS Register but are present in the Russian PTO's Register i.e. valid in Russia) the rights holder has 7 working days from receipt of the customs notice (only one time) to decide whether to release the goods or take appropriate actions.