The owner of an intellectual property object or a person acting on behalf of the owner within the scope of granted powers (e.g. a licensee) is entitled to file an application to the Federal Customs Service requesting customs recordation of a corresponding intellectual property object if there is evidence that the owner's rights may be infringed by import/export of goods into the Russian Federation or during other actions in respect of goods under customs control.
The following intellectual property objects protected according to the Law may be recorded with the Customs register of Russia:
- service marks;
- appellations of origin;
- objects of copyright and neighboring rights.
The procedure of customs recordal of IP Rights in the Russian Federation is stipulated by the Administrative regulations of the Federal Customs Service on execution of the state function on maintaining the customs register of intellectual property.
The minimum list of documents to be attached to the application for custom recordal in Russia includes:
- a Power of Attorney (in case a request is filed by a representative);
- a document confirming the validity of the intellectual property object (e.g. a copy of the certificate or statement from FIIP);
- a detailed description of the intellectual property object and original goods;
- samples or images of original goods;
- documents confirming that original goods have been put into the civil circulation on the territory of the Russian Federation;
- license agreements or other agreements in force;
- description and samples/images of infringing goods (if there is any information on infringement);
- 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 has not been confirmed;
- a copy of civil liability insurance to cover damages.
Depending on the circumstances of each particular case additional documents and materials may be provided.
Payment is not stipulated for registration in the Customs registry, however it is obligatory for the right owner to ensure completion of obligation as recovery of losses to the right owner/declarant/recipient of goods using methods stipulated by the Russian Federation civil legislation - the right owner is entitled to provide an agreement on insurance of the liability risk for causing damage in favor of indicated persons instead of ensuring the obligation, wherein the amount of ensuring the obligation or the amount of insurance should not be less than 300 000 RUB.
The legislation stipulates processing of the application with the Federal Customs Service within 1 month from the date of submission of the request. The object may be recorded with the Customs register for the term of 2 years with a possibility of further extension for an unlimited number of times within the validity term of the rights on the corresponding intellectual property object.
In order to assist in protection of intellectual property rights during the customs control of goods crossing the border, the information on the intellectual property objects recorded with the Customs register is forwarded to all customs authorities of the Russian Federation. It is worth mentioning that measures on protection of intellectual property rights are not applied to goods moved across the border:
- by natural persons for personal use including mailing to their address within international mail operations;
- in accordance with the customs procedure of customs transit;
- by diplomatic delegations, consular institutions, other official delegations of foreign states, international organizations, staff of said delegations, institutions and organizations, for official and personal use.
If, based on the Customs register data, it is determined that the goods being under customs control and processing may infringe IP rights, release of said goods is suspended for the term of 10 working days which, if necessary, may be extended by additional 10 working days.
Not later than 1 working day after the day of taking a decision to suspend the release of goods the customs authority informs the declarant and the right owner or their representatives about said suspension, the reasons and terms of suspension, and provides said persons with the contact information of each other.
During the term of suspension the right owner may ask the competent authority for protection of rights and inform the customs authority about this action or inform the customs authority about absence of infringement of rights on the intellectual property object. In case of taking measures for intellectual property rights protection the matter of IPR infringement is settled in the scope of further jurisdictional procedures - if infringement is not confirmed, the right owner is obliged to cover the losses to the owner/declarant/recipient of goods.
In case you have any questions regarding Custom recordal of IP Objects in the Russian Federation please do not hesitate to contact us.