Russia News Archives

January 27, 2012

Luxury Watchmaker Wins Parallel Imports Case in Russia

On November 14, 2011, the Commercial Court of Saint Petersburg and the Leningrad Region ruled in favor of the luxury watchmaker Longines Watch Co. Francillon Ltd., member of the Swatch Group, in a parallel import case against the Russian online shop Bestwatch.ru (Bestwatch.ru LLC) and the website administrator Adelia LLC.

Bestwatch.ru did not deny that it had offered the watches bearing the mark Longines for sale. However, Bestwatch.ru failed to prove that it had trademark owner’s permission to put the goods into circulation.

The court ruled that importing branded goods without the trademark owner’s consent violates exclusive trademark rights and prohibited the online shop from offering Longines watches for sale.

Longines demanded compensation for damages in the amount of approximately USD 159,000 (EUR 122,000) from Bestwatch.ru and USD 3,200 (EUR 2,460) from Adelia. The court upheld the claim against Adelia in full and reduced the compensation from Bestwatch.ru to USD 96,000 (EUR 74,000).

Both defendants have filed appeals at the 13th Arbitration Court of Appeals in Saint Petersburg, but did not provide evidence of payment of the appeal-filing fee. For this reason, the appeal has been suspended until February 6, 2012.

In recent years, the Federal Antimonopoly Service of the Russian Federation has been pushing to legalize parallel import by amending the Article 1487 of the Civil Code of the Russian Federation, which clearly prohibits it. The Russian government will reportedly consider this issue in the spring of 2012.

For more information, please contact Yuriy Karlash at our Ukraine office.

Source: The Supreme Arbitration (Commercial) Court of the Russian Federation

Russia to Establish Special IP Court by February 1, 2013

Last month Russian President Dmitry Medvedev signed two laws related to the creation of the Court for Intellectual Property Rights in Russia, a specialized arbitration court for IP disputes to be established by February 1, 2013.

The two laws introduced amendments to the following regulations:

• On the Judicial System of the Russian Federation;
• On Arbitration Courts in the Russian Federation;
• On the Status of Judges in the Russian Federation;
• The Arbitration Procedure Code of the Russian Federation;
• The Civil Code of the Russian Federation.

The jurisdiction of the IP court will inter alia include the following:

• Pre-term termination of trademark’s legal protection due to non-use, now under the jurisdiction of the Patent Disputes Chamber of the Russia’s Federal Service for Intellectual Property, Patents and Trademarks (Rospatent);
• Challenging the antimonopoly authority’s decisions under which the acquisition of the exclusive right for means of individualization of a legal person, production, works, and services and enterprises was recognized as an act of unfair competition;
• Determining patent holders;

Disputes related to copyright, neighboring rights and topologies of integrated microcircuits will be settled by other courts, as it was before the amendments were introduced. However, the new IP court will act as the court of cassation for such cases.

For more information, please contact Yuriy Karlash at our Ukraine office.

Source: Russian government’s website

Rospatent and USPTO Agreement Takes Effect

The agreement between the United States Patent and Trademark Office (USPTO) and the Russian Federal Service for Intellectual Property (Rospatent), under which Rospatent will serve as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) under the Patent Cooperation Treaty (PCT) for international applications received by the USPTO, took effect on January 10, 2012.

The USPTO and Rospatent signed the agreement at the World Intellectual Property Organization (WIPO) headquarters in Geneva on September 22, 2010.

According to the USPTO, the agreement is beneficial for the US applicants because the cost of search and examination will be lower and the process faster. A search carried out by Rospatent as the ISA will cost USD 415 (EUR 325). Applicants selecting Rospatent as the IPEA will pay a preliminary examination fee of USD 171 (EUR 134), as well as a handling fee of USD 219 (EUR 172). When the International Search Report (ISR) is not prepared by Rospatent, the fee will be USD 255 (EUR 200).

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: USPTO

US Identifies Russia, Ukraine, Bulgaria Marketplaces as Top Pirates

Last month the United States government released a list of marketplaces, both physical and online, well known for offering counterfeit and pirated products. Ukrainian, Russian and Bulgarian markets and websites are included on this list.

The review of “notorious markets”, formerly part of the Office of the United States Trade Representative (USTR) annual Special 301 report, has been published as a separate document for the second time.

Among physical marketplaces offering fake goods, the report lists the open-air Petrivka Market in Kiev, Ukraine, with approximately 300 stands selling pirated music, films, games and software. The Savelovskiy Market in Moscow, Russia, previously known for offering counterfeit electronic goods, has been taken off the list as “the management has implemented an action plan to stop the distribution of infringing goods”.

Among the online sources of fake goods, the report includes Russian-based BitTorrent tracker Rutracker, which is among Russia’s 15 most visited websites and among 300 most visited websites globally. Also included on the list are the Ukraine-based BitTorrent tracker Demonoid, Bulgarian-based BitTorrent tracker zamunda and the BitTorrent indexing website Kat.ph (formerly kickasstorrents), based in Ukraine, Romania and Canada.

Russian social network vKontakte, which is among the four most visited websites in Russia and among the 40 most visited websites in the world, is cited in the report for providing access to unauthorized audio and audiovisual material.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: Office of the USTR’s Review of Notorious Markets

December 27, 2011

Largest Russian Brewery Denied Trademark Registration

Russia’s Federal Service for Intellectual Property, Patents and Trademarks (Rospatent) has recently refused to grant to Baltika Breweries, the largest Russian brewery, the ‘Zatecky Gus’ trademark registration.

The decision is based on the fact that the trademark includes the word ‘Zatecky,’ an adjective derived from ‘Zatec,’ which is an old Czech town that produces its own beer bearing the mark Zatec. Rospatent therefore concluded that the trademark could mislead the consumers as to the origin of goods.

Baltika Breweries, based in Saint Petersburg, Russia, has argued that its reputation would prevent consumers from being misled. At the time of going to press, it was not known whether the brewery is planning to appeal Rospatent’s decision.

Baltika Breweries, part of the Carlsberg Group, is the largest brewery in Eastern Europe and Russia’s beer market leader with a 40-percent market share. It owns over 40 brands, exports its products to over 70 countries and contributes to 70 percent of Russia’s beer exports.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: RAPSI, Russian Legal Information Agency

Quarter of Russian Internet Users Have Paid for Online Video

A recent research has shown that the number of Russian Internet users who have paid for the online video content is on the rise and has reached 26 percent.

According to the research conducted by J’son & Partners Consulting from Moscow, the number of people watching video online in Russia has reached 41 million people, while the online video market’s value could grow from USD 1.7 million (EUR 1.3 million) in 2011 to USD 40 million (EUR 31 million) by 2016.

The majority of the users are presently watching non-professional or pirated video content on video-sharing websites such as Youtube, Rutube, Smotri, Video.yandex, Video.mail and Vkontakte, but the share of websites offering legal video content, such as Tvigle, Ivi, Zoomby and Videomore has been increasing.

As a result, advertisers have become more interested in the online video content providers and the online video advertisement market in Russia is expected to grow from USD 36 million (EUR 27 million) in 2011 and to USD 280 million (EUR 214 million) by 2016.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: The Hollywood Reporter online portal, entertainment industry news source

November 29, 2011

Rospatent Appeals Moscow Court Decision in 'Putin-Medvedev' Vodka Trademark Case

Russia’s Federal Service for Intellectual Property, Patents and Trademarks (Rospatent) has recently appealed against Moscow Commercial Court’s decision stating that Rospatent’s refusal to register the “Volodya i Medvedi” (Volodya and the bears) trademark is illegal.

Earlier this year Rospatent refused to grant to Royalty, the Russian beverage producer, trademark protection for the brand of vodka that makes reference to the names of Russia’s Prime Minister Vladimir Putin and President Dmitry Medvedev.

Volodya is a nickname for Vladimir and Medvedi, or bears, sounds similar to the last name Medvedev.

Royalty appealed before the Moscow Commercial Court against the Rospatent’s decision and won the case on September 12, 2011.

At the time of going to press, additional details about the appeal brought by Rospatent against the Moscow Commercial Court were not available.

The “Volodya i Medvedi” vodka is currently sold in Russia.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: Russian Legal Information Agency (RAPSI)

Russia’s IP Commitments in WTO Accession

After 18 years of negotiations, Russia has recently won the approval from a key committee to join the World Trade Organization (WTO). The final decision on Russia’s admission is expected next month.

As the intellectual property rights violations have long been one of the major obstacles to Russia’s WTO entry, the accession agreement requires Russia to:

• Seek criminal charges against illegal optical disc production at government-controlled sites
• Impose more rigorous sanctions against piracy and counterfeiting
• Eliminate non-contractual administration of rights by the beginning of 2013
• Introduce stricter control of copyright collectives to ensure right holders receive proper remuneration
• Withdraw its reservations to the provisions of the Berne Convention for the Protection of Literary and Artistic Works before joining the WTO

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: Reuters, Kyiv Post

September 23, 2011

Forbes Sues Russian Firm Over Fake Edition

On August 2, 2011, the US business magazine Forbes filed a trademark infringement suit against a firm from Russia’s Republic of Dagestan that published a fake edition of the Forbes magazine.

Last year, the firm Neftyanik published the so-called special edition of Forbes featuring a businessman with a traditional sheep wool hat on the cover, along with the title “How to boost your capital in Dagestan”.

“Forbes Media LLC, the owner of the Forbes trademark, appealed to the Arbitration Court of the Republic of Dagestan with a lawsuit for protection of its rights violated by the illegal use of its trademark,” said Forbes representatives in a statement. The Russian firm could not be reached to comment on the issue.

The court hearing was scheduled for September 16, but we were unable to obtain information on the outcome at the time of our publication.

Last year Forbes became the owner of the Forbes.ru domain name in Russia and received USD 300,000 (EUR 212,000) in damages, after a domain name infringement case against a Russian cyber squatter.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: Reuters news agency

Russian Home Appliance Manufacturer Files Complaint Against Samsung

Simbirsk-Crown, Russian manufacturer of household appliances showing the mark Galaxy, has sent a cease and desist letter to Samsung requesting that the well-known electronics maker stop using the Galaxy mark.

According to their website, Simbirsk-Crown has been successfully operating in the wholesale market of household appliances, electric tools, cookware and other consumer goods in the city of Ulyanovsk, Russia’s southwestern Ulyanovsk region, and other regions in the Russian Federation.

The Russian company registered the Galaxy trademark in Russia in May 2011, in classes 7, 8, 9, 10, 11 and 21, while Samsung registered the names Galaxy Tab and Galaxy S in July 2011 in class 9, covering mobile devices including smartphones and other electrical goods.

Simbirsk-Crown is demanding USD 90 million (EUR 66 million) compensation from Samsung and has also requested a compensation of approximately USD 3.5 million (EUR 2.6 million) from each of the several Russian retailers who sold Samsung’s products.

Simbirsk-Crown’s lawyer Sergei Zuykov claims that Samsung violated a provision found in Article 1484 of the Russian Civil Code, while Vladimir Biryulin, Samsung’s legal representative in Russia, notes that the Russian PTO has approved Samsung’s trademark application and that different companies can register the same trademark in the same class if there is no likelihood of confusion.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: paidContent, online portal covering news, information and analysis of the business of digital media

Up to 30 Percent of Russia’s Key Retail Goods Counterfeit

According to a recent report by the Department of Economic Security at the Russian Ministry of Internal Affairs, up to 30 percent of the goods sold in Russia’s major retail sectors such as apparel, household chemicals, food, cosmetics and perfumes are counterfeit, while counterfeit designer clothing accounts for 37 percent of the total retail turnover.

The report further states that the Internet has helped reduce the sales of counterfeit video and audio products such as CDs and DVDs in Russia, since most of the video and audio material is available online and can be downloaded directly from there.

During a recent operation called “Counterfeit”, the Russian authorities discovered 5,000 violations involving counterfeits and managed to close 73 shops and workshops and suspend 70 websites offering counterfeit products.

Russia is mainly the importer of counterfeit goods rather than the producer. The report mentions China, Singapore, India, as well as Bulgaria, Turkey, Poland and Ukraine as the major sources of counterfeit goods available in Russia. However, local manufacturing of fakes is large in sectors such as alcoholic beverages, medicine and audio and video products.

The Moscow Times reported that the police in the Chukotka region, northeastern Russia, seized a large amount of counterfeit alcohol this month, including 915 liters of grain alcohol, 706 liters of vodka and 454 liters of cognac, while an illegal sausage factory was closed in Moscow earlier this year.

A counterfeit Yves Rocher store is still operating in the Republic of Tuva in south-central Siberia, even though the well-known French perfume maker has complained to the local authorities.

According to the Moscow Times, the most commonly counterfeited perfumes in Russia bear the marks of Christian Dior, Dolce & Gabbana, Donna Karan and Nina Ricci.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: Russian news portal Pravda.ru, The Moscow Times

August 30, 2011

Walmart’s ‘Save Money. Live Better’ Opposition Dismissed in Russia

On May 31, the Russian Patent Disputes Chamber dismissed Walmart’s trademark opposition against Maria-Ra, one of the largest supermarket chains in Russia.

Walmart, an American public multinational corporation that runs chains of large discount department stores and warehouse stores, filed an opposition following Maria-Ra’s application for registration of a slogan in Russian “Pay less. Live better”, which Walmart claimed is similar to its “Save money. Live better” slogan.

The Chamber ruled that the literal translation of Walmart’s “Save money” in Russian is “Keep Money” or “Economize money”. Considering that therefore, “Save money”, could never translate to “Pay less”, the Chamber reasoned that there is no violation on behalf of the defendant. The Chamber added that the two marks (slogans) do not resemble one another in design, which further supports the Chamber’s decision to dismiss Walmart’s claim.

For more information, please contact Yuriy Karlash at our Ukraine office.

Source: Altapress.ru news portal; Rospatent

Russian Registrar Fined EUR 6 M for Domain Registration Violations

The Federal Antimonopoly Service of Russia (FAS) has recently found Russia’s largest domain registrar Ru-Center guilty of violating the domain name registration rules and ordered it to pay a fine of approximately EUR 5.7 million (USD 8.2 million), which is equivalent to the amount of the registrar’s illegally obtained income.

According to FAS, there was a limit to the registrations that a single registrar could make during the first day of open registration of domains in the Cyrillic zone .рф in November 2010. In order to bypass the limit, Ru-Center concluded agreements with several other registrars, which formally acted on their own behalf, but actually, registered the domains for Ru-Center. Ru-Center then allegedly sold the domains during online auctions.

For more information, please contact Yuriy Karlash at our Ukraine office.

Source: Federal Antimonopoly Service of Russia (FAS)

July 25, 2011

Russia’s Media Company Combats Illegal Online Content

Last month Russia’s leading media company CTC Media and Russia’s most popular social network Vkontakte started a cooperation project that involves removing unauthorized content, which belongs to CTC, from Vkontakte and posting it on CTC Media’s online video platform Videomore, which allows users to watch legal videos free of charge.

CTC Media representatives stated that more than 3,200 videos, whose copyrights belong to CTC Media, were removed from Vkontakte during the first two weeks of the cooperation.

“We started with the replacement of the most popular content, recent CTC Channel premiers, such as ‘Boarding School’, and during this period, the viewership dynamic of this video on the licensed player Videomore has increased by 50 percent, with viewings peaking at 200,000 viewings per day”, said Askar Tuganbaev, CTC Media’s Internet project development director.

Tuganbaev added that CTC Media is planning to start cooperation with other popular social networks in the country and to introduce specialized software that can identify unauthorized content and automatically replace it with legal content.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: Broadband TV News

June 21, 2011

Russia to Establish New Federal IP Service

Russian President Dmitry Medvedev has signed a decree establishing the Federal Service for Intellectual Property, RIA Novosti reported on May 24, 2011.

Medvedev stated that some of the responsibilities of Russia’s Federal Service for Intellectual Property, Patents and Trademarks (Rospatent) and the Federal Agency for the Legal Protection of Military, Special and Dual Purpose Intellectual Property (FAPRID) will be transferred to the new service.

Medvedev expressed hope that the intellectual property protection in Russia will become more productive after the reorganization of the relevant government bodies.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: RIA Novosti

May 26, 2011

Russian Cyrillic .РФ Domain Registration Changes as of May 16, 2011

Ru-Center, Russia’s main domain name registration center, announced the .РФ domain registration changes, in effect as of May 16, 2011.

Under the new rules, the .РФ domain owner is allowed to give up his or her rights to the domain name by sending a written notice to the Ru-Center. Furthermore, Ru-Center is allowed to cancel the domain name ownership rights if there have been violations of the rights belonging to trademark, service mark or trade name owners.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: Ru-Center

Italian Winemakers Tackle Counterfeiting in Russia

The Consortium for the protection of the Asti, a well-known Italian sparkling wine, has developed special bottle stickers enabling consumers to check if the wine they purchased is genuine. The measure has been taken mainly to protect the Russian customers from fake alcohol.

As the St. Petersburg Times reported on May 11, 2011, each bottle of the genuine Asti wine now features a sticker with a unique code which the customers can enter on the Asti website to obtain more information on the product.

“Russia is one of the top five key consumers of Asti wines in the world, along with the U.S., Germany, Great Britain and Italy itself,” explained Paolo Ricagno, the president of the Asti consortium. “It is high time that we dealt with the counterfeit issue. It is a shame that in Russia, one of our most important markets, the customers, attracted by the good name of Asti, purchase horrendous fakes that smell so bad you wouldn’t want to taste it, and has nothing in common with our product.”

The Asti consortium was established in 1932 to monitor the quality and improve the production of the Asti sparkling wines coming from the Piedmont region in Italy.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: The St. Petersburg Times, twice-weekly English-language newspaper, based in St. Petersburg, Russia

Russia Still on Special 301 Report Priority Watch List

Russia remains on the Priority Watch List of the Office of the United States Trade Representative (USTR) 2011 Special 301 report, which was released last month and which examines the adequacy and effectiveness of intellectual property rights protection in the 77 trading partners of the United States.

Russia is the only Eastern European country among the 12 countries placed on the Priority Watch List, mainly due to the widespread counterfeiting and piracy, particularly in terms of the motion picture, television and entertainment software industries. The report also notes the widespread Internet piracy and the weak IP enforcement in the country.

On the positive note, the report emphasizes Russia’s completion of the following legislative commitments in the IP area:

• Amendments to the Civil Code paragraphs specifically dealing with IP;
• Passing of the Federal Law on Customs Regulation, granting ex officio authority to customs officials;
• Amendments to the Law on Activity Licensing, prohibiting infringers from renewing optical media production licenses; and
• Amendments to the Law on Circulation of Medicines.

Another 29 countries are placed on the Watch List, among them Belarus, Romania, Tajikistan, Turkmenistan, Ukraine and Uzbekistan. Last year, the Czech Republic, Hungary, and Poland were removed from the Watch List because of significant improvements in the reduction of piracy and counterfeiting.

For the full report go here.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: USTR 2011 Special 301 Report

Russia to Set Up Special IP Court

Russia is planning to set up a specialized intellectual property court as part of the Skolkovo innovation center, a modern technology complex to be built in the village of Skolkovo, near Moscow, aimed at encouraging scientific research and development.

“Skolkovo’s intellectual products should be protected against copyright and piracy. The project’s major purpose is to create high-value intellectual products. These products will serve as a criterion to assess the center’s performance. For this reason, protection of intellectual property is high on the agenda of both members of the project and its leaders,” explained Igor Drozdov from the Supreme Court of Arbitration of the Russian Federation.

In addition to the IP court, an IP centre is also to be set up in Skolkovo to aid in the protection and commercialization of inventions.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: RIA Novosti, Russian International News Agency; The Voice of Russia

April 27, 2011

Russia Amends Trademark Infringement Penalties

Russian President Dmitry Medvedev has recently signed the Law on Amendments to the Criminal Code of the Russian Federation, which excludes imprisonment for certain offences.

The new amendments affect the provisions dealing with intellectual property infringement, namely the Article 180 covering the following offences:

• Illegal use of someone’s trademark, appellation of origin or similar designations in relation to similar goods, if such deed was conducted more than once or caused heavy damages and;

• Illegal use of warning marking in relation to the trademark or appellation of origin not registered in Russia, if such deed was conducted more than once or caused heavy damages.

Before the amendments, the only sanction for the above-mentioned offences, in case they were conducted by a group of people acting in concert or by an organized crime group, was imprisonment of up to six years with additional penalties. Under the new provisions, along with the imprisonment as envisaged by the previous provisions, the court can also apply a fine of between EUR 1,325 (USD 1,785) to EUR 25,000 (USD 36,000), or a fine corresponding to the infringer’s salary or other earnings in a period from 3 to 5 years.

For more information, please contact Elena Zubenko at our Ukraine office.

Source: PETOŠEVIĆ

Russian Film Producers Demand Adequate Laws Against Internet Piracy

The Association of Television and Film Producers of Russia has recently drafted a set of legislative proposals that would help battle the growing problem of Internet piracy, RIA Novosti reports.

The association members are pushing for legislation changes that would make it obligatory for web administrators and Internet providers to fight against unauthorized content. The members also envision a separate law regulating copyright protection on the Internet.

Last year the members urged various Russian companies to remove all illegal content from their websites by January 31, 2011. The members have lifted the deadline and are now urging the websites only to remove the movies currently in theaters.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: Russian International News Agency - RIA Novosti

March 24, 2011

Rospatent Rejects 'Putin-Medvedev' Vodka Trademark

Russia’s Federal Service for Intellectual Property, Patents and Trademarks (Rospatent) has recently refused to grant to Royalty, the Russian beverage producer, trademark protection for the “Volodya i Medvedi” (Volodya and the bears) brand of vodka, which makes reference to the names of Russia’s Prime Minister Vladimir Putin and President Dmitry Medvedev.

As the Moscow Times explains, Volodya is a nickname for Vladimir and Medvedi, or bears, sounds similar to the last name Medvedev.

Royalty filed the trademark application in December 2009, which Rospatent rejected in October 2010. Royalty filed an appeal arguing that the name “Volodya i Medvedi” was inspired by the most popular male name in Russia and fairytales. Rospatent rejected the appeal in February 2011 stating the brand would be “detrimental to the image and interests of the state and contrary to public interests.”

Interestingly enough, a Ukrainian company Vineksim, not affiliated with Royalty, has registered the same brand of vodka, “Volodya i Medvedi”, in Ukraine and started to export it to Russia. Vineksim also sells the Putinka brand, which is the second most popular vodka brand in Russia.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: The Moscow Times

Nestle Sues Russian Beverage Distributor Over Parallel Import

The Swiss food giant Nestle has filed a lawsuit at the Moscow Arbitration Court against the Russian company Elitvoda Ru accusing it of importing Perrier, Vittel and S. Pellegrino mineral water into Russia without authorization and selling it below the official price.

RBC Daily, Russian business newspaper, reports that Elitvoda Ru was a legal importer and distributor of Nestle mineral water until 2009 when Nestle raised the prices. The Russian company refused to sign a new contract with Nestle and last year it started to import the products independently from different suppliers in Germany, Poland, the Czech Republic and Holland. The Swiss company believes that Elitvoda Ru has violated its trademark rights and wants to ban further imports. The plaintiff is also asking the court to seize and destroy the already imported goods.

RBC Daily notes that the Russian legislators have had a lenient attitude towards parallel imports in the past and that Elitvoda Ru won similar parallel import disputes with the brewing giant Heineken in 2008 and the Czech brewery Staropramen in 2010.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: RBC Daily, Russian business newspaper

Sochi 2014 Polar Bear Mascot Center of Copyright Dispute

Russian artist Viktor Chizhikov is claiming that the polar bear chosen as one of the three mascots for the XXII Olympic Winter Games, taking place in Sochi, southwestern Russia, in February 2014, is a copy of the Mishka bear cub he created for the 1980 Summer Olympics in Moscow.

Last month, during a live national television broadcast, the Russian public chose three mascots – a rabbit, a leopard and the controversial polar bear. Following the vote, the creator of the Mishka bear (left) from the 1980 Olympics publicly stated the polar bear (right) was a copy of his mascot.

“It’s exactly the same as mine: the eyes, the nose, the mouth, the smile, though it’s askew,” Viktor Chizhikov stated. “I don’t like it when people steal, the author always feels it especially painfully”, he added.

The Sochi 2014 Organizing Committee has released a statement denying copyright infringement accusations.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: Reuters

Russia to Get International Patent for Space Monitoring System Against Natural Catastrophes

Moscow’s Khrunichev State Research and Production Space Center, a manufacturer of spacecraft and space-launch systems, is expected to receive an international patent for its global aerospace monitoring system that can be used to predict potential natural disasters and send warnings to countries all over the world.

The system foresees the use of satellites, airplanes, ground sensors and navigators to monitor environmental changes and transmit data on ongoing or potential threats, such as earthquakes, forest fires, tsunamis or asteroid falls, to regional and international crisis centers. These centers will then notify the UN institutions to ensure people are timely evacuated from dangerous areas.

Heads of major space agencies approved the project during a meeting in Washington last year and so far 11 countries have shown willingness to invest into it.

Russia has already developed movable stations required for the aerospace monitoring, while the Earth monitoring will be conducted with the help of already operating satellites as well as new devices.

Director of the Research Institute for Space Exploration Valery Menshikov says that the project worth USD 22 billion (EUR 16 billion) is likely to attract other countries:

“Indonesia is among countries most frequently suffering from natural disasters. After a series of talks with Indonesian government, we were allowed to set up a regional headquarters in Bali. Ukraine offered us access to its resources in Yevpatoria, Crimea, from where space security used to be ensured in Soviet times. Argentina has also joined in. China is ready to invest in the project, and we also expect Australia to make its decision on the issue.”

For more information, please contact Jelena Jankovic at our Balkan Regional office.

Source: The Voice of Russia

February 23, 2011

Amendments to Russia’s Civil Code: Risk or Benefit for Trademark and Domain Name Holders?

As we have previously reported, a number of amendments to the Russian Civil Code paragraphs dealing with intellectual property entered into force in October 2010.

Before the amendments entered into force, Article 1483 gave domain names the status of intellectual property objects; the domain name holders therefore had the opportunity to object to a later registration of an identical trademark.

Under the current Article 1483 domain names are not placed on the same level as intellectual property objects. This regulation change has raised concerns about the potential problem of so-called reverse domain name hijacking or recapture of domain names, i.e. the registration of a trademark with a purpose of obtaining an existing domain name from its current owner, who registered and used it in good faith, before the trademark was registered.

A recent decision adopted by the Ninth Arbitration Appeals Court involving the Russian electronics company Inter Elektrik, is an example of this problem. A physical person Bureshkin Sergey registered the domain name www.interelektrik.ru. Inter Elektrik claimed damages based on trademark infringement of its exclusive rights to the trademark Inter Electrik as part of the domain name. The court reasoned that since the domain name is not mentioned among the IP objects in the Civil Code, the trademark owner is entitled to protect his rights against any unauthorized use of the trademark, including in the domain name. The court disregarded the fact that the domain name had been registered before the similar trademark.

The Court of Cassation overruled this decision, recognizing that in this case, the administrator of the domain name does not infringe the trademark owner’s rights. The judge concluded that the fair use of a domain registered before the trademark cannot be regarded as an infringement.

This decision is consistent with the position adopted by the Supreme Commercial Court on December 2009, when a similar case was dismissed since the domain name was registered before the trademark’s priority date.

However, it should be noted that Russia does not have a common law system and precedents are therefore not taken into consideration. For this reason, we cannot exclude the possibility of decisions similar to Ninth Arbitration Appeals Court’s decision in the Inter Elektrik case. The domain name owners can however avoid such issues by securing trademark rights in advance.

On the other hand, to prevent domain name squatting, i.e. registering or using a domain name with intent to profit from the goodwill of a trademark belonging to someone else, the Federal Antimonopoly Service (FAS Russia) will prevent anticompetitive actions relating to the registration of domain names. Any attempt to register a domain consisting of an existing trademark will automatically run afoul of Article 14(1)(4) of the Russian Federation’s Law On the Protection of Competition and be considered as an act of unfair competition.

Additional control will be exercised with respect to the applications for domain names containing unregistered marks where:

• unregistered marks have been used long before the domain name applications; and
• domain name registration is contrary to the principles of justice and made with intent to obtain an undue advantage

Namely, an investigation may be triggered if:

• the domain name is offered for sale/lease to the person or company (or to its competitors) who owns a trademark contained within the name
• registration of the domain name is made with intent to prevent business competitors from using an unregistered trademark
• registration of the domain name creating a likelihood of confusion with the business of the owner of an unregistered trademark is made with intent to profit from the goodwill of an unregistered trademark belonging to someone else

Infringers will be subject to penalty, which will be determined on a case-by-case basis, depending on the circumstances. According to the deputy head of the unfair competition department, the FAS will be allowed to request from the infringer to modify the domain name or to cease using it.

Despite the fact that in Russia only courts may revoke a registration of a domain name, the FAS position might help courts to resolve the domain names disputes more quickly.

For more information, please contact Alissia Shchichka at our Belgium office.

Source: Article 1483, Part IV of the Civil Code; the Federal Antimonopoly Service (FAS Russia) website; decisions of Ninth Arbitration Appeals Court and The Court of Cassation in Inter Elektrik case

Criminal Copyright Infringement Charges Against Russian Music Sharer

Russian authorities have filed criminal copyright infringement charges against an unidentified 26-year-old Moscow resident, who posted 18 songs on his page of the Russian social network Vkontakte (In Contact). The accused faces a fine and up to six years in prison if convicted.

The songs belong to a Russian pop band and were allegedly downloaded over 200,000 times, causing the recording company Nikitin, the exclusive copyright holder, USD 3,600 (EUR 2,652) in damages. There have been criminal charges filed against VKontakte users for uploading pornographic and extremist content, but this is the first criminal case due to copyright infringement.

In October 2010, some of Russia’s major web companies, including VKontakte, released a joint statement directed at the entertainment industry and lawmakers requesting that users take sole responsibility for the content they upload. The companies also suggested that the copyright holders themselves regularly check the music and films and notify website administrators if they discover unauthorized content.

Russia’s President Dmitry Medvedev has recently called for the amendments to the copyright regulations in Russia, explaining that the current laws are not adequate in an era of the advancing technology and the Internet.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: French news agency Agence France-Presse (AFP)

January 20, 2011

Russia and Finland Launch Patent Prosecution Highway

On December 8, 2010, the representatives of Russia’s Federal Service for Intellectual Property, Patents and Trademarks (Rospatent) and the National Board of Patents and Registration of Finland (NBPR) signed the Memorandum of Understanding on the Piloting of the Patent Prosecution Highway (PPH) program, aimed at accelerating the patent granting procedure by sharing information between patent offices. The program’s start date is March 1, 2011.

The PPH agreements allow each participating patent office to benefit from the search and examination work already done by the other office. For example, an applicant that received a favorable ruling from one patent office on at least one claim in the application may request a fast-track examination of the corresponding application filed with the other patent office. The applicants thus benefit from patentability determination in multiple jurisdictions and reduced costs of prosecution.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: Rospatent

December 21, 2010

Russian Police Seize 26,710 Liters of Counterfeit Alcohol

The police officials in Russia’s city of Tyumen, in the southwest of the country, have recently discovered a railway carriage carrying 26,710 liters of counterfeit alcohol.

According to the Russian news portal Pravda.ru, the police detained 6,880 half-liter bottles of Gold of the Slavs vodka, 42,580 bottles of Pshenichnaya vodka and 1,980 liters of other alcoholic beverages. All bottles had fake excise labels. The cargo with counterfeit alcohol arrived in Tyumen from the Russian republic of North Ossetia-Alania.

According to the article, several years ago, Valentina P., a 46-year-old businesswoman from Russia’s Arkhangelsk Oblast, in the northwest of the country, had a hard time proving that she had not been deliberately selling large quantities of counterfeit alcohol and that one of her suppliers deceived her.

“I did not pay much attention to supplier’s documents and delivery notes, because I had been working with that firm for several years. Here is the first lesson for all those who want to have an honest business: always check all documents meticulously, even if you know your suppliers.”

She recommends that consumers buy alcohol at specialized spirit shops, since these stores are less likely to sell counterfeit drinks.

According to recent estimates, 50 percent of wine and 70 percent of cognac on the Russian market is counterfeit. Counterfeit alcohol is blamed for the deaths of thousands of people each year.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: Russian news portal Pravda.ru

Russia Plans Crackdown on Foreign Words in Advertising

The Moscow Times reports on November 22, 2010 that the Russian authorities plan to eliminate all foreign words without Russian translation in advertising. The article states that some companies are registering their slogans as trademarks, because foreign words do not have to be translated if they are part of a registered brand name, trademark, service mark, or the name of a television or radio show.

Under the Russian law, the official language of the country must be used in advertising to reduce the chances of consumers being misled about the content of the advertisement or the product being advertised. English words like “sale” or “fitness center” may therefore soon be replaced by Russian equivalents or phonetic transliterations in the Cyrillic alphabet, the country’s official script.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: The Moscow Times

November 29, 2010

Russia Adopts Amendments to IP Regulations

The Russian parliament has recently adopted a number of amendments to the Civil Code paragraphs specifically dealing with intellectual property. The amendments entered into force on October 19, 2010.

The changes reflect the relevant World Trade Organization (WTO) requirements and are in line with various international agreements such as the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

Amendments made to paragraph 5 of Article 1229 restrict the exclusive rights granted to the objects of intellectual property, particularly the objects of related rights, inventions, industrial designs and trademarks. Restrictions to the exclusive rights granted to inventions or industrial designs will be made in individual cases, provided that they do not interfere with the normal exploitation of inventions and industrial designs and that they do not unreasonably prejudice the legitimate interests of rights holders, taking into account the legitimate interests of third parties. Limitations to the exclusive trademark rights will also be made in individual cases, provided that these restrictions take into account the legitimate interests of right holders and third parties.

Before the amendments, the examiners had the option to refuse to register a trademark identical to the previously registered domain name. The amendments to Article 1483 of the Civil Code exclude this possibility.

Article 1273 that authorizes the reproduction of works by consumers for personal use without the consent of the author or other right holder (and, consequently, without remuneration) was amended by adding the words “if necessary”. However, no explanations have been provided as to what is to be deemed necessary. The law leaves it up to the judges to assess whether the reproduction was necessary or not, which in turn may bring about legal uncertainty. According to Article 1273, holders have the right to receive compensation for the free use of subjects covered by copyright.

Article 1245, which regulates the compensation and the procedure for its collection was amended by Decree No. 829. According to the Article as amended, as from January 1, 2011, the manufacturers and suppliers of multimedia storage devices will be obliged to pay 1 percent of royalties to the authors, performers and producers of music and film. The list of devices is comprehensive and is intended to cover any technology that can be used to play and copy audiovisual content. Apart from the equipment for copying and reproduction (players, DVDs, CDs, etc.), it also includes devices that are not directly associated with reproduction or copying of audiovisual works, such as mobile phones and digital cameras. Forty percent of the collected royalties will be distributed among the music and film authors, 30 percent among the performers and 30 percent among the manufacturers of audiovisual works. The government will decide on the organization to handle the collection of the abovementioned royalties.

Finally, Article 1516 was added to the Civil Code to regulate the protection of geographical denominations that do not contain the name of a geographical object but identify the object as originating from a certain territory. Those designations will be protected under the provisions provided by the Code for the appellations of origin.

Furthermore, Russia recently adopted amendments to the Law on the Licensing of Certain Activities, which are to enter into force on December 6, 2010. The changes were made to tighten the licensing requirements for the producers of optical storage media with content protected by copyright or related rights.

Under the amended Law, companies who have previously had their license revoked by the court will not be able to get a new permit for reproduction of audiovisual works, computer software, databases and phonograms.

The law also establishes a new requirement to obtain the authorization to produce audiovisual works, computer software, databases and phonograms. It is now also necessary to use the production equipment owned by the licensee.

For more information, please contact Alissia Shchichka at our Belgium office.

Source: PETOŠEVIĆ

Open Registration of Cyrillic Domain Begins in Russia

On November 11, 2010, Russian Cyrillic .рф domain names became available to the general public. During the first hour of open registration 77,867 new names were registered. On the fourth day of the open registration, more than 400,000 new names were registered.

The average registration price per domain name ranges between EUR 12-14 (USD 16-19). Non-residents and legal entities registered abroad will not be able to register a website name in Russian during the first year of open registration.

For the list of accredited registrars, go here.

Priority registration, during which 18,000 domain names were registered, lasted from November 2009 to September 2010. During this period, Russian state authorities, trademark owners, mass media owners and non-governmental organizations could register their domain names.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: The official Russian registry, the Coordination Center

Russia Prosecutes Suspected Fake Drug Spammer

The Russian authorities have filed criminal charges against the 31-year-old Russian businessman Igor Gusev, whose company Despmedia has been reportedly sending spam e-mails advertising fake pharmaceuticals to users in the United States, Canada and other countries through an online partner Glavmed.com. The company allegedly made USD 120 million (EUR 89 million) since 2007.

The police raided Gusev’s home on October 26, 2010 and found the documents that may help in locating the Russian businessman, who is believed to have fled Russia. Moscow’s business daily Kommersant reported that the counterfeit medicines he advertised originated in India.

According to the British newspaper The Daily Telegraph, Gusev might have also been involved in SpamIt.com, a website that paid spammers to promote a fake version of the anti-impotence drug Viagra. After the website closed down on September 27, 2010, the number of spam emails around the world temporarily fell by an estimated 50 billion a day.

There had been no lawsuits filed against spammers in Russia until this case in spite of the Russian Association of Electronic Communications (RAEK) estimates that Russia’s economy lost approximately USD 462 million (EUR 342 million) due to spam last year, while the spammers earned USD 123 million (EUR 91 million) during the same time period.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: RIA Novosti, The Daily Telegraph, Securing Pharma

Counterfeit Airplane Parts Jeopardize Flight Safety in Russia

Illegally imported fake airplane parts pose a great threat to flight safety in Russia on both military and commercial aircraft, reports The St. Petersburg Times of November 2, 2010.

An inspection of 60,000 aircraft parts revealed about 14,500 counterfeits, stated Russian Deputy Prime Minister Sergei Ivanov, citing the Ministry of Transport statistics.

Ivanov added that in 2009 and 2010 the Federal Customs Service filed 19 criminal charges and more than 300 misdemeanor charges related to the import of airplane parts.

Most of the counterfeit parts enter Russia from former Soviet republics, stated Ivanov, mentioning Ukraine, Lithuania and Latvia as the main transit points for the parts produced in underdeveloped countries. He added that the CIS countries are also producers of many counterfeit parts for the aviation industry.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: The St. Petersburg Times, twice-weekly English-language newspaper, based in St. Petersburg, Russia

October 20, 2010

Rospatent to Serve as ISA, IPEA under PCT for US

On September 22, 2010, the United States Patent and Trademark Office (USPTO) and the Russian Federal Service for Intellectual Property, Patents and Trademarks (Rospatent) signed an agreement under which Rospatent will serve as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) under the Patent Cooperation Treaty (PCT) for international applications received by the USPTO.

According to the USPTO, the agreement is beneficial for the US applicants because the cost of search and examination will be lower and the process faster. A search carried out by Rospatent as the ISA will cost USD 449 (EUR 323). Applicants selecting Rospatent as the IPEA will pay a preliminary examination fee of USD 180 (EUR 129), as well as a handling fee of USD 175 (EUR 126). When the International Search Report (ISR) is not prepared by Rospatent, the fee will be USD 271 (EUR 195).

The agreement was signed at the World Intellectual Property Organization (WIPO) headquarters in Geneva. The implementation details are still being finalized and the start date will be announced soon.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: USPTO

Fake Goods Make Quarter of Russia’s Key Retail Sector Sales

According to a recent report by Moscow’s Higher School of Economics, 24 percent of the goods sold in 2009 in Russia’s major retail sectors, including apparel, footwear, medicines, alcohol, tobacco, household chemicals and cosmetics, were counterfeit.

The sales of fake products accounted for approximately USD 31 billion (EUR 22 billion), which was six percent of Russia’s total retail turnover in 2009.

The report, issued on September 23, 2010, blames the economic crisis for the increase in the sales of fake goods and states that the positive trends from previous years turned negative in 2008 and 2009.

The study was commissioned by RusBrand, the association of branded goods manufacturers, in an effort to raise awareness about the counterfeiting problem in Russia.

The Customs Union between Russia, Belarus and Kazakhstan may lead to an even greater number of fake goods entering Russia. Once the border between Russia and Kazakhstan is lifted, it will reportedly be easier for Chinese and Indian counterfeits to find their way into Russia because of the poorly protected Kazakh-Kyrgyz border.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: The Sydney Morning Herald; French news agency Agence France-Presse (AFP)

September 21, 2010

Trademark Registrations Greatly Increasing in Russia

According to the report “Trademarks in Russia: Growing Opportunities, Major Challenges”, released in June 2010 by Thomson Reuters, trademark registrations in Russia increased by 46 percent in the period between 2004 and 2009, which is the largest increase of any country in the world and indicates Russia’s growing importance for trademark holders and IP professionals.

In comparison, Brazil, China, France, Germany, Great Britain, and the United States experienced respectively a 40, 3, 23, 5, 5, and 6 percent increase for the same time period.

Despite the world economic crisis, 50,107 applications were filed in Russia in 2009, compared with 57,112 applications in 2008 and 57,262 in 2007. There was a slight decrease in the applications filed by domestic applicants - 31,502 in 2007 vs. 30,024 in 2008. However, the number of applications filed by foreign applicants in 2008 rose by more than 5 percent compared with 2007 - 27,088 and 25,760 respectively. By the end of 2009, the total number of valid registrations in the country reached 246,607.

Before 1999, more than 60 percent of all registered and operational trademarks belonged to foreign corporations. However, due to Russia’s significant economic growth in 1999, 63 percent of all applications and 50 percent of all registered trademarks belonged to domestic applicants. In 2008, 53 percent of all applications and 54 percent of all registered trademarks belonged to domestic applicants.

In 2008, foreign registrants were mainly corporations from the U.S, Germany, France, Italy, Switzerland, Japan, and China. There was a significant increase in U.S. registrations (917 in 1991 vs. 3,502 in 2008) and Germany (1,796 in 1991 vs. 3,408 in 2008). The data for 2009 were not available.

The statistics also show an increase in the number of objections and claims filed before the Russian Federal Service for Intellectual Property, Patents and Trademarks (Rospatent) appeal body, the Chamber of Patent Disputes. This number decreased in 2008 compared with 2007, but it was still significantly higher than during the 2004-2006 period.

The report also provides an overview of Russia’s economic and political conditions and covers the history of the trademark law in the country. Also discussed in the report are the challenges that the Russian Cyrillic alphabet poses for trademark owners. To view the full report, please go here.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: Thomson Reuters

DuPont Defends Teflon Brand Against Russian Infringers

American chemical company DuPont has recently won a trademark infringement suit against two Russian companies that sold cookware under the brand name Teflon.

In April 2010, the Moscow State Arbitration Court ruled against the Russian company Domtek and its retail outlet ZAO Pilot Ltd, which imported and sold cookware bearing the mark Teflon.

The court ordered the two companies to pay approximately EUR 18,000 (USD 23,000) in damages to DuPont and to immediately cease using the brand name on their products.

The Russian companies filed an appeal in June 2010, but Moscow’s Ninth Arbitration Appeal Court upheld the lower court’s decision, maintaining that Teflon is a well-known brand in Russia and that the unlawful use of the brand misleads consumers about the quality of the products and also causes financial losses to DuPont.

Pleased with the court’s decision, Phil Bardsley, DuPont’s sales manager for Europe, Middle East and Africa, said: “Our message to brand infringers and product counterfeiters continues to be that DuPont will not tolerate any abuse of the Teflon brand. We will continue to aggressively pursue claims against those who misuse it.”

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: DuPont Press Club – DuPont’s online press service in the UK

Russian Court Affirms Bank’s Exclusive Rights to Cabbage Image

The Russian Arbitration court has upheld the Russian SKB-Bank’s exclusive rights in the banking sector to use the image of a Savoy cabbage in advertising, in a dispute against another Russian bank, National Bank TRUST, which has also recently used an image of the same vegetable. The court also ordered the National Bank TRUST to pay the SKB-Bank USD 9,700 (EUR 7,400) in damages.

As the Russian International News Agency, RIA Novosti, reported on September 8, 2010, the SKB-Bank registered the Savoy cabbage image at the Russian Federal Service for Intellectual Property, Patents and Trademarks (Rospatent) back in 2006 for the purpose of using it in its advertising campaigns. Although the National Bank TRUST argued that a certain legal entity cannot own the rights to a product of nature such as this widely consumed vegetable, Rospatent maintained that banks are allowed to register common words and corresponding images as trademarks as long as these words and images have no direct connection with the banking sector.

Two other Russian banks are involved in a similar dispute. Namely, the Orient Express Bank, which obtained exclusive rights to the word ‘Christmas’, has filed a claim against the Russian Capital Bank for using the same word. The hearing of the case is scheduled for September 24, 2010.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: Russian International News Agency - RIA Novosti

Microsoft to Protect Russian NGOs From Politically Motivated Piracy Raids

On September 14, 2010, Microsoft announced it would give the Russian non-governmental organizations (NGOs), and some media, free software, after the computer giant was accused of assisting the Russian authorities in confiscating government opponents’ computers under the pretext of searching for unlicensed software.

On September 11, 2010, the New York Times reported that Microsoft allegedly ignored requests for help from the targeted organizations and that the company’s Russian attorneys assisted the police in seizures.

According to the report, one targeted organization was a popular environmental group, Baikal Environmental Wave, which organized protests following the government’s decision to reopen a factory that had been polluting Lake Baikal in Siberia, the world’s oldest and deepest lake and a UNESCO World Heritage Site since 1996.

Faced with these accusations, Microsoft’s Moscow office representative stated the company is preparing free software packages for the NGOs and that it would announce more details soon. The company might also provide the NGOs with a new software license that would prove that they own legal software.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: Agence France-Presse (AFP), The New York Times

Knauf Awarded USD 160,000 in Case Against Russian Counterfeiter

A Moscow court has fined a Russian counterfeiter with USD 160,000 (EUR 123,00) in damages for infringing the rights of Knauf, a leading producer of building materials, based in Germany. Knauf CIS representatives stated that this is the largest sum of money the company had won in a case against a counterfeiter.

The Moscow Times reported on September 2, 2010, that the defendant Vladimir Potekhin operated two illegal factories where plaster, cement and other products were made and placed into packages bearing the logos of Knauf and other building materials manufacturers. Potekhin then reportedly sold the goods to retailers and wholesalers in Moscow and the Moscow region.

Knauf CIS representatives have revealed that the company hires private security contractors to help them identify the manufacturers of fake goods.

“Knauf has been battling with counterfeit products for nearly 10 years on our own,” said Gerd Lenga, CEO of Knauf CIS, adding that the company spends millions of euros annually on this effort in Russia.

“Neither the government nor society itself takes the problem of counterfeiting seriously. As paradoxical as it may seem, both the poor and the rich are ready to buy fake products,” stated Knauf’s lawyer Nikolai Piksin.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: The Moscow Times

Russia Opens Software Piracy Case Against LG Electronics

The Russian authorities have recently opened a criminal investigation against the Russian branch of LG Electronics, one of the world’s largest television set and mobile phone producers headquartered in Seoul, South Korea, for permitting 60 of its employees to use unlicensed software.

On September 2, 2010, the Interior Ministry’s economic crimes department issued a statement saying this is the first time Russia opened a software piracy investigation against a leading foreign company. Sixty computers have been confiscated with the losses estimated to be around EUR 51,000 (USD 65,000).

According to Russian International News Agency, RIA Novosti, the inspection was held following a request of the Business Software Alliance (BSA), a trade group representing some of the world’s leading software makers.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: Agence France-Presse (AFP), RIA Novosti

Moscow Gorbushka Market Faces Uncertain Fate

The Russian authorities are allegedly preparing to shut down Moscow’s Gorbushka marketplace after a recent inspection resulted in the discovery and seizure of around 26,000 counterfeit DVDs and CDs.

According to the Moscow News, the shopping center’s ground level remains unchanged but about 50 percent of the stalls and outlets on the second floor, where the pirated movies, music and software were reportedly sold, have been closed and display signs stating: “New store opening soon. Administration.”

The center’s representative Vasilina Zoremba has, however, denied the reports, blaming the economic crisis for the closing of some outlets.

Gorbushka was an open-air market until 2001, when it was closed down due to piracy and counterfeiting. A shopping center Gorbuskin dvor opened in its place, but it is still apparently flooded with inexpensive, pirated DVDs and CDs.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: The Moscow News

Russia Adopts New Rules for Destruction of Fake Drugs

On September 3, 2010, the Russian government adopted new rules outlining the procedure for the destruction of substandard and counterfeit drugs.

Under the new rules, only the companies licensed to collect, transport and dispose of grade I to IV waste will be allowed to destroy substandard and counterfeit medications. These companies are required to have access to proper disposal facilities and equipment.

After Russia’s federal health and social development service, Roszdravnadzor, identifies counterfeit or substandard medicines, the owner of the medicines is obligated to remove them from circulation and destroy them within 30 days, at his or her own expense. The owner may however appeal by following a procedure also covered by the new set of rules.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: Securing Pharma

August 24, 2010

Forbes Finally Gets Forbes.ru in Russia

In July 2010, the American business magazine Forbes finally became the owner of the Forbes.ru domain name in Russia, seven months after winning a domain name infringement case against a Russian cyber squatter who had been illegally using it.

In January 2010, the Moscow Arbitration Court ruled against the Russian travel agency Landmark VIP Services for the unauthorized use of the magazine’s trademark and ordered the defendant to pay USD 300,000 (EUR 212,000) in damages, the highest compensation ever awarded in Russia in a domain infringement case.

Landmark VIP Services however appealed and won a right to annul the court’s decision. Forbes then filed a counter-appeal but has in the meantime reached a private agreement with the travel agency, whose managing director says it transferred the domain “as a gesture of goodwill”. It is not mentioned whether the private settlement involved a payment from Forbes.

The Russian edition of Forbes had been using the alternative domain name forbesrussia.ru since November 10, 2009, when its Russian website was launched.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: Forbes.ru

Russian Publisher Fined USD 250M in Copyright Case

On July 20, 2010, the Moscow Arbitration Court ruled against a leading Russian book publisher AST in a copyright infringement case and ordered it to pay an unprecedented sum of USD 250 million (EUR 197 million) in damages to a smaller Russian publisher Terra.

The Moscow Times reported that Astrel, a subsidiary of AST, infringed on Terra’s copyright by publishing books written by the acclaimed Russian science fiction author Alexander Romanovich Belyayev (1884-1942).

Terra asserted that its claim against AST was based on the Civil Code clause that extends the duration of copyrights for authors who worked during the Second World War to 70 years after their death. Some experts, however, argue the clause cannot be applied retroactively to Belyayev’s writings since it was introduced in 1993, 51 years after his death.

AST is reportedly planning to appeal the decision, claiming that Belyayev’s works entered the public domain in 1992, 50 years after his death.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: The Moscow Times

July 21, 2010

Russian Couple Arrested in EUR 1 Billion Film Piracy Case

The Russian authorities have recently arrested and filed criminal charges against a Russian couple Ivan and Irina Podorozhnikovymi, who registered and hosted a file-sharing website called Interfilm, where they uploaded pirated movies allegedly causing almost EUR 1 billion (USD 1.25 billion) in damages.

According to the blog TorrentFreak, reporting on the latest news on the BitTorrent protocol and file sharing, Interfilm offered pre-released, camcorded movies with links to piracy groups outside the country. The husband and wife are known online as ‘Ripper’ and ‘Nadezhda’.

Police have also arrested several staff members, located some of the website’s most active users and may open criminal cases against those who kept large numbers of downloaded movies on their personal computers or uploaded them on their own websites.

In 2007 and 2008, Interfilm was one of the most popular BitTorrent trackers. On May 26, 2009, the Ministry of Internal Affairs carried out a raid on the tracker, after receiving complaints from the Russian Anti-Piracy Organization (RAPO).

According to TorrentFreak, although Interfilm had closed down after the raid, it reappeared at LeaseWeb in the Netherlands. In addition to using the Interfilm.ru domain, the website is allegedly operational from BitHouse.org.

In February 2010, the Russian authorities seized the domain of Russia’s most popular file-sharing website, Torrents.ru, which immediately moved to a new location, Rutracker.org.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: The Moscow Times, TorrentFreak

Sunrise Period for Russian Cyrillic Domain Ends Mid-September

The sunrise period for the registration of the Russian Cyrillic .РФ domain names is underway, ending on September 16, 2010. From November 25, 2009 to March 25, 2010 the Russian Federation allowed priority registration on behalf of Russian state authorities. From March 25 to May 12, 2010, trademark owners whose trademarks (word elements) contained Russian Cyrillic were able to submit applications.

On May 12, 2010, the registration became available to all trademark owners. On July 15, 2010 several new categories of users were added:

• Exclusive owners of company names, officially registered in Russia,
• Exclusive owners of geographical indications of origin;
• Non-profit organizations officially registered Russia;
• Mass media owners officially registered in Russia before May 12, 2010.

For trademark owners, the application for priority registration should be submitted with a copy of the trademark certificate and a copy of the legal entity certificate or an entrepreneur registration certificate. If the application is based on an international trademark registration, a certificate showing that the registration is valid in Russia should also be submitted.

It is possible to register a domain name corresponding to a trademark that is not written in Russian Cyrillic. In this case, the non-Russian Cyrillic trademark or part of the trademark may be transcribed or transliterated, at the discretion of the trademark owner, into Russian Cyrillic.

In case a trademark name includes endings such as “.RU” or “.COM”, etc. or their transliteration (“.РУ”, “.КОМ”, etc.), the rights holder may exclude the endings from a domain name. The spaces in the word element can also be deleted or replaced with hyphens.

For example, a trademark holder of “ABCD.RU” can register the following domain names:

• абцд.рф
• абцдру.рф
• абцд-ру.рф

According to DomainNews.com, around 15,000 domain names have already been registered and it is expected that there will be more than 50,000 domain names registered by mid-September. In late 2010, the .РФ domain names will be available to the general public throughout the world.

More information on the priority registration rules and procedures is available here.

For more information, please contact Taras Kulbaba or Jelena Jankovic.

Source: Russian Coordination Center

June 23, 2010

Russian Online Pharmacy Uses PGEU Endorsement Logo Without Authorization

A Russian online pharmacy has been using the endorsement logo of the Pharmaceutical Group of the European Union (PGEU), a European association representing European Union pharmacists, on their e-commerce website without PGEU authorization, leading consumers to believe that the pharmaceutical goods sold on the Russian website are approved by this Brussels-based organization.

The PGEU was informed on May 19, 2010 that the Russian owned Internet pharmacy, named Canadian Neighbor Pharmacy, offering Viagra and other prescription drugs, posted the PGEU endorsement logo. The pharmacy was taken down on May 20, 2010. Its web address was www.cancarepharmacy.com.

By clicking on the PGEU logo, the customers would be redirected to a counterfeit certificate signed by the PGEU President Filip Babylon. The pharmacy also claimed that four other North American pharmacy associations endorsed it.

The European Parliament’s Committee on the Environment, Public Health and Food Safety (ENVI) insists that the PGEU endorsement logo is displayed on all legal online pharmacies. Considering the apparent ease of counterfeiting endorsement certification, PGEU calls for a better solution. “Of course it is absolutely important that patients who wish to buy medicines legally on the Internet are given safe options to do so. However our experience shows that we run the risk of creating a false sense of security if counterfeiting certification is so easy. We should not put patients in the position of having to discriminate between fake and real certification. We need to explore technological options which put certification beyond the counterfeiters”, stated the PGEU Secretary General John Chave.

The PGEU became aware of the unauthorized use of the endorsement logo when one of its members received a spam email message from the Russian pharmacy with the alleged PGEU endorsement.

PGEU represents around 400,000 members, including national associations and representative bodies of European Union pharmacists in 30 countries.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: Medical News Today

Level of Fake Pesticides in Russia Doubles

The amount of counterfeit pesticides used in Russia has doubled in the last few years and is now among the highest in the world, reports agroru.com, a Russian agricultural portal.

According to the Russian Union of Manufacturers of Crop Protection Products (RUMCPP) estimates, the share of counterfeit pesticides in Russia ranges from 15 to 30 percent whereas in 2006 it was 10 percent. The value of counterfeit pesticides is estimated to be approximately USD 85,000,000 (EUR 69,000,000).

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: Agroru.com

May 24, 2010

First Cyrillic Domain Launched in Russia

On May 13, 2010, the Internet Corporation for Assigned Names and Numbers (ICANN) officially delegated the first Cyrillic domain .рф to Russia at the Internet Governance Forum in Moscow. The first two websites available on .рф are the Russian president and government’s websites президент.рф and правительство.рф.

The letters .рф are equivalent to the Latin letters rf, short for the Russian Federation. According to RIA Novosti, all Internet browsers support the new domain and the domain names must contain only letters from the Russian alphabet.

In January 2010, the ICANN announced that Russia, Egypt, Saudi Arabia and the United Arab Emirates are the first four countries that met a specific set of linguistic and technical requirements for domain names written entirely in local scripts.

The Russian Cyrillic domain aims to affirm the status of Russian as a world language and make Internet use easier for Russian speakers unfamiliar with Latin letters. According to RIA Novosti, the number of websites with the .рф suffix may reach up to 50,000 by the end of this year.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: RIA Novosti

Russian Tuberculosis Clinics Get Minilabs to Prevent Fake Medicines

Three tuberculosis clinics in Russia have been equipped with GPHF-Minilabs, mobile mini-laboratories supplied by the Global Pharma Health Fund (GPHF), to protect patients from being treated with counterfeit medicines, the proliferation of which is a burning problem in Russia.

These small laboratories can quickly verify drug quality and detect counterfeit medicines, making it possible for doctors at clinics in Moscow, Russia’s capital, and the cities of Vladimir and Orel in the western part of the country, to get rid of counterfeit pharmaceuticals that could increase the spread of drug-resistant strains of tuberculosis.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: SecuringPharma.com

April 26, 2010

Adidas Sues Two Russian Shoe Retailers, Wins One Case, Loses Another

German-based sports apparel manufacturer Adidas has recently won one and lost one legal battle against two Russian shoe retailers that sold sneakers with Adidas’ trademark diagonal stripes.

Earlier this month, Adidas lost the trademark infringement suit against Alba, a retailer with 70 outlets in Russia. Adidas demanded that the disputed 400 pairs of sneakers be destroyed and sought EUR 63,801 (USD 86,413) in compensation, but the Moscow Arbitration Court dismissed its claims. We were not able to obtain the exact basis of the court’s decision.

The same court, however, ruled in favor of Adidas in August 2009, following the lawsuit started in May 2009 against Tsentrobuv, Russian largest shoe retailer with 300 stores across the country. Adidas claimed that women’s sneakers bearing the mark of Centro were confusingly similar to its own. The court confiscated all disputed goods and ordered the defendant to pay the plaintiff EUR 766 (USD 1037) in damages.

For more information, please contact Andriy Nikolayenko at our Ukraine office.

Source: Pravo.ru

March 30, 2010

Russia Closes Top File-Sharing Website Torrents.ru

Russian authorities have without any notice suspended Russia’s most popular file-sharing website torrents.ru for the alleged violation of copyright laws.

Ru-Center, Russia’s main domain name registration center, closed down the website on February 18, 2010, following the order of Moscow prosecutors and stating that the decision was due to the January 26, 2010 illegal online sale of the Autodesk software by a Moscow resident for USD 50 (EUR 36).

Ru-Center spokesman Andrei Vorobyov said that even though the center has closed down websites in the past due to pornography and extremism, this is the first time they were ordered to close one down due to IPR infringement.

On February 20, thousands of outraged users signed an online letter of appeal, sent directly to Russian President Dmitry Medvedev and Prime Minister Vladimir Putin, claiming that the officials overstepped the bounds of their authority and harmed the website’s 4 million users.

“This out-of-the-blue decision is proof of the incompetence of our police. What was done was utterly illegal – you have to have a decision from the court before you can just cut off a website,” stated Nikita Kislitsyn, the editor of Russian computer magazine Hacker.

On the contrary, Yury Grymov, a popular film director in Russia, thinks the authorities made a good decision.

“Piracy takes away ninety percent of our profits. It has destroyed cinema in this country and we can’t finance the films we want as a result. It is high time the government did something about pirates,” Grymov said.

Despite the controversy and the possible infringement charges, the owners of torrents.ru have moved their website and files to a new location, rutracker.org.

For more information, please contact Jelena Jankovic in our Balkan Regional Office.

Source: RIA Novosti

.RU Domain Registration Policy Change as of April 1, 2010

Starting from April 1, 2010, the official registry of the Russian .RU domain, Coordination Center, will require registrants applying for .RU domain name to show a proof of identity.

This new policy was adopted to curb computer crime, including spam, fraud and obscene content, by making it harder for criminals to register domain names under fake identities.

To verify their identities, natural persons will need to submit a copy of their passport and legal entities a copy of their state registration certificate.

For more information, please contact Jelena Jankovic in our Balkan Regional Office.

Source: The Register

Russian Retailer Registers Wal-Rus Trademark Ahead of Wal-Mart Arrival

X5 Retail Group, the largest Russian retail company in terms of sales, has registered the Wal-Rus trademark, similar to that of the American largest retailer Wal-Mart, ahead of Wal-Mart’s expected arrival in the country, according to RBC Daily, Russian business newspaper.

The supermarket chain Perekrestok, part of X5 Retail Group, reportedly registered the trademark, featuring a star between the two words, in December 2009, following its application with the Russian Federal Service for Intellectual Property, Patents and Trademarks (Rospatent) in October 2009.

However, Wal-Mart representative in Russia, Konstantin Dubinin, said that Wal-Mart changed its corporate identity and adopted a new logo in 2008, abandoning the star. RBC Daily’s source doubted that the American retailer, which has been expected to enter the Russian market for many years, will file a trademark infringement suit against its Russian counterpart.

For more information, please contact Jelena Jankovic in our Balkan Regional Office.

Source: RBC Daily

Half of Russia’s Cell Phones Counterfeit or Contraband

According to the recent estimates of Mobiset.ru, Russia’s telecommunications portal, two to three percent of cell phones in Russia are counterfeit and around 50 percent are contraband.

Counterfeit phones mostly originate in China and range from low to high-quality copies. The most commonly copied brands include Nokia, BlackBerry, iPhone and Apple.

According to the Moscow Times, a Vertu Ascent Ferrari 1947 Limited Edition phone costs EUR 7,480 (USD 10,500) in an official Vertu shop while it is sold for only EUR 196 (USD 267) on Moscow’s street markets.

According to the article, the Russian customs officials discovered 7 million counterfeit items and initiated more than 1,000 legal proceedings across the country in the first two weeks of 2010 alone.

For more information, please contact Jelena Jankovic in our Balkan Regional Office.

Source: The Moscow Times

February 23, 2010

Russian Antitrust Commission Bans Chocolates Similar to Ferrero Rocher

The Federal Antitrust Commission of Russia (FAS) has recently ruled that the Russian confectionery maker Konti-Rus violated the Law on Protection of Competition by producing the Esfero Crema sweets, which were found to be confusingly similar to the Italian confectionary maker Ferrero’s chocolates Ferrero Rocher.

As the legal portal Pravo.ru reported on February 1, 2010, the FAS claimed unfair competition on the basis of trademark infringement, stating that the packaging and the look of chocolates were confusingly similar to Ferrero’s signature round Nutella-filled chocolates wrapped in gold foil.

The case against Konti-Rus was dismissed as the infringer voluntarily admitted violation of article 14.4, of the Law on Protection of Competition, which prohibits the production and sale of goods infringing intellectual property rights.

For more information, please contact Elena Zubenko or Jelena Jankovic.

Source: Pravo.ru

Russian Cyrillic Domain Passes ICANN String Evaluation

On January 21, 2010, the Internet Corporation for Assigned Names and Numbers (ICANN) announced that Russia, Egypt, Saudi Arabia and the United Arab Emirates are the first four countries to meet a specific set of linguistic and technical requirements required under the ICANN’s IDN (Internationalized Domain Name) ccTLD Fast Track String Evaluation.

The ICANN has received a total of 17 requests for an IDN ccTLD through the String Evaluation process, representing ten languages, but only four countries listed above have so far passed the evaluation.

The next step for the four approved countries is to request String Delegation. String delegation requests are submitted to IANA root zone management.

This is an important milestone for domain names written entirely in local scripts, in this case Cyrillic and Arabic.

The Fast Track String Evaluation was approved on October 30, 2009 by the ICANN Board.

A full overview of activities and links to the materials related to this matter can be found here.

For more information, please contact Jelena Jankovic in our Balkan Regional Office.

Source: ICANN

Twenty-Five Percent of Russian Software Outlets Sell Counterfeit Microsoft Programs

Over the last few months, Microsoft conducted an inspection of 2,500 computer and software retailers in 53 Russian cities and discovered that 25 percent sold counterfeit programs, while 11 percent offered to install illegal software.

According to the survey results that Microsoft published on February 8, 2010, Central Siberia and the Russian Far East are top offenders, with up to 71 percent of outlets in those regions selling unlicensed software. According to RIA Novosti, high piracy rates were also recorded in Sverdlovsk (41 percent), Chelyabinsk (30 percent) and Moscow regions (27 percent).

The evidence that Microsoft provided to the Russian authorities led to nearly 1,000 prosecutions related to the illegal use of software in 2009.

That said, the piracy rate of Microsoft software in Russia is in decline, stated Denis Guz, responsible for Microsoft’s department promoting the sale of licensed software.
“A few years ago most computer stores in Russia offered some form of pirate software. Now, as we can see, there are fewer sales points of that kind,” Guz stated.

For more information, please contact Jelena Jankovic in our Balkan Regional Office.

Source: The Sydney Morning Herald

January 21, 2010

Forbes Wins Domain Name Forbes.ru and USD 300,000 in Damages

American business magazine Forbes and its Russian publisher Axel Springer Russia won a case against a Russian travel agency Landmark VIP Services, which has been using the domain name forbes.ru, and received a record USD 300,000 (EUR 212,000) in damages, the magazine announced on January 15, 2010 on its website.

The Moscow Arbitration Court ruled against the travel agency for unauthorized use of the magazine’s trademark and ordered the defendant to pay the highest compensation ever awarded in Russia in a domain name case.

Landmark VIP Services, which still has not taken down its website, registered forbes.ru domain name back in 2002. It is currently promoting cruises to the Antarctica on the homepage of its website, where it is also implied that its domain name is in honor of the 19th-century Scottish scientist James David Forbes, known for his study of glaciers.

Russian edition of Forbes has been using the alternative domain name forbesrussia.ru since November 10, 2009, when its Russian website was launched. Forbes hopes to register the forbes.ru domain name soon.

“I am very glad that Russia’s judicial system is following global standards of protection of intellectual property,” stated Regina von Flemming, CEO of Axel Springer Russia.

Grigory Punanov, editor in chief of forbesrussia.ru, was also pleased with the trial’s outcome. “We have fought for a long time for our legitimate right to use the domain name forbes.ru. I hope the court decision will enter into force soon and that our site will be located precisely at that address.”

For more information, please contact Jelena Jankovic in our Balkan Regional Office.

Source: Forbes Russia website

January 20, 2010

Burger King Fights for its Domain Name in Russia

American fast food chain Burger King delayed the opening of its first restaurant in Russia after filing a lawsuit against the Dutch company Talco Aktiengesellschaft, which registered the domain name burgerking.ru in 2000.

Although Burger King registered its trademark in Russia in 1994, it did not register its domain name.

In November 2009, Burger King signed a franchise agreement with Shokoladnitza, a popular Russian coffee shop chain, and planned to open its first restaurant in Moscow in December 2009. However, after refusing to buy the existing domain name from the present rights holder, on November 30, 2009 Burger King sued the Dutch company for trademark infringement at the Moscow Arbitration Court.

According to intellectual property experts, Burger King is likely to win the case, as Part 4 of the Russian Federation Civil Code, effective since January 1, 2008, states that a trademark holder has the exclusive right to use a domain name corresponding to its trade name. Experts argue that the fast food chain may even receive compensation of up to EUR 117,000 (USD 170,000).

For more information, please contact Jelena Jankovic in our Balkan Regional Office.

Source: Kommersant

Counterfeit Chinese Fireworks Blamed for the Deadly Russian Nightclub Fire

A politician from the ruling United Russia party blamed counterfeit Chinese fireworks for the fire that engulfed the Lame Horse nightclub in the city of Perm, west-central Russia, on December 5, 2009, killing more than 150 and injuring 160 people.

“Russia is flooded with counterfeit fireworks. Most of them come from China, but there are other countries involved,” Dmitry Polikanov, advisor to the Head of the Central Executive Committee at the United Russia party, told Russia Today, adding that the cheap, low-quality pyrotechnics caused the deadly fire.

The Lame Horse nightclub fire was one of the greatest disasters that occurred in Russia last year. It started when sparks from the fireworks ignited the low, plastic ceiling. The visitors died from smoke inhalation, burns and in the panic-induced stampede.

For more information, please contact Jelena Jankovic in our Balkan Regional Office.

Source: Global Times

Quarter Ton Counterfeit Caviar Confiscated from the Aircraft of Russia’s Largest Diamond Company

On December 23, 2009, approximately 220 kilograms of red salmon caviar of an unknown origin was confiscated at the Yakutsk Airport, in the city of Yakutsk in Eastern Siberia.

The caviar was packed into nine cardboard boxes and loaded into the rear end of an airplane belonging to ALROSA, world’s leading diamond miner. The plane was on its way to the city of Mirny, also in Eastern Siberia.

A few days earlier, the Yakutsk aviation security officials had received information from Vladivostok and Khabarovsk city officials to keep an eye out on this shipment.

The transit police in the Yakutia region, Siberia, is soon expected to initiate a criminal procedure. One airline employee has already been arrested on suspicion of loading the cargo onto the plane.

ALROSA Company Limited is one of the world’s leading companies in the field of diamond exploration, mining, manufacture and sales. It accounts for 97 percent of Russia’s diamond production, while its share in the global rough diamond production is 25 percent. The company has not given any comments regarding the issue.

For more information, please contact Jelena Jankovic in our Balkan Regional Office.

Source: RIA Novosti

Russia Sets Minimum Vodka Price to Curb Counterfeit Alcohol Production

On January 1, 2010, Russia introduced a new minimum price for a vodka bottle in an effort to prevent the production and sale of counterfeit alcohol blamed for the deaths of thousands of people each year.

The lowest price of any half a liter vodka bottle is now approximately USD 3 (EUR 2). Officials hope that the move will help reduce alcohol abuse in the country, while also protecting Russia’s legal vodka producers.

For more information on this issue please go here or contact Jelena Jankovic in our Balkan Regional Office.

Source: RIA Novosti

The Singapore Treaty on the Law of Trademarks Enters into Force with Respect to Russia

As reported by the World Intellectual Property Organization (WIPO), on September 18, 2009, Russia ratified the Singapore Treaty on the Law of Trademarks, adopted in Singapore on March 27, 2006. The treaty entered into force on December 18, 2009.

The Singapore treaty establishes common, international standards for administrative trademark registration procedures.

For more information, please contact Jelena Jankovic in our Balkan Regional Office.

Source: WIPO

December 22, 2009

Russian Gangs Make Millions by Selling Fake Tamiflu Online

An investigation by the British security company Sophos has revealed that Russian cyber criminals are making millions of dollars by selling counterfeit Tamiflu online.

Bogus online pharmacies, with names such as Canadian Pharmacy or European Pharmacy, carry forged copies of certificates guaranteeing authenticity. The Russian gangs are marketing their products by sending billions of spam messages selling Tamiflu, and other drugs.

In addition to paying money for useless or even dangerous drugs, the investigators say that customers are putting themselves at risk of identity fraud.

Sophos has discovered that the top five countries purchasing counterfeit Tamiflu are the United States, Germany, United Kingdom, Canada and France and that cyber criminals make between EUR 11,240 (USD 16,386) and EUR 67,442 (USD 98,338) a day.

For more information, please contact Jelena Jankovic in our Balkan Regional Office.

Source: Times Online

French Champagne Producer Defends its Right to Cristal Trademark in Russia

French champagne producer Louis Roederer can continue to sell its Cristal champagne in Russia after it won a decision against the Russian vodka manufacturer Soyuzplodoimport.

Although Roederer obtained an international registration for Cristal in 1949 and a national registration in Russia in 1995, in April 2009, the Chamber of Patent Disputes ruled that Roederer’ Cristal infringed on Soyuzplodoimport’s vodka brand Kristal, which was registered in Russia in 1974.

Soyuzplodoimport argued that Roederer’s Cristal trademark registration should be cancelled because it is confusingly similar to its Kristal brand.

The court ruled that Soyuzplodoimport had missed the period for challenging Cristal’s trademark registration, which is five years from the date the trademark registration was granted.

On October 26, 2009, the Moscow Arbitration Court reversed this ruling and affirmed the legal protection of Cristal in Russia.

For more information, please contact Jelena Jankovic at Balkan Regional Office.

Source: Marques

Microsoft Launches Anti-Piracy Program in Russia

On December 9, 2009, Microsoft Corporation launched a new program in Russia to protect Internet users against pirated software.

The Windows Genuine Advantage (WGA) tool, which notifies customers that their system is not genuine, is to be supplied to several million Russian Internet users over the next few months.

The new program aims to reduce the number of pirated software on the market, raise awareness among Russian population and encourage them to make a conscious decision to switch to licensed software.

Microsoft loses about four billion dollars annually due to sales of pirate copies in Russia. About 60 percent of Russian users buy unlicensed software, with intention or by mistake.

The installation of WGA is optional. While validating, WGA collects no data to identify or contact user.

For more information, please contact Jelena Jankovic at our Balkan Regional Office.

Source: Vostok Media

Russia’s Textile Industry Grows After Shutdown of Counterfeit Goods Market

On June 29, 2009, the police shut down Russia’s largest marketplace, the Cherkizovsky Market in northeast Moscow, where thousands of Chinese vendors sold counterfeit goods.

This was done in an effort to curb the spread of fake goods and protect the Sino-Russian trade. The closedown of the market included the burning of 22 containers that reportedly contained illegally imported counterfeit products.

Prime Minister of Russia, Vladimir Putin, stated on December 3, 2009 that since the closing of the Cherkizovsky Market in June, Russia’s apparel sector had grown by three percent, and the production of pants and suits increased by 16 percent and 13 percent, respectively. He continued to state in a televised interview: “We will never win as long as domestic manufacturers are hit by smuggled and counterfeit goods.”

For more information, please contact Jelena Jankovic in our Balkan Regional Office.

Source: Xinhuanet

November 24, 2009

Russia to Defend Kalashnikov Rights

Russia will step up action to protect the intellectual property rights of the Kalashnikov rifles, which are produced without license by dozens of manufacturers around the world.

There are about 100 million Kalashnikov assault rifles worldwide, of which half are counterfeit, i.e. produced without licenses, patents and intergovernmental agreements. As a result of counterfeit productions across the world, the brand has been tarnished and Russia has incurred financial losses. Russia is negotiating draft agreements with foreign producers of the weapon to protect the Kalashnikov, noting that China and a few Eastern European countries are prepared to negotiate such agreements.

During the Soviet era, Moscow signed 25-year license agreements with various communist satellites in Eastern Europe, authorizing them to produce Kalashnikovs. However, these agreements have expired.

Russian weapons manufacturer Izhmash, which produces the Kalashnikov, secured a state patent for this weapon in year 1997 and began pressing foreign manufacturers to respect its intellectual property.

For more information, please contact Jelena Jankovic in our Balkan Regional Office.

Russia To Start Priority Registration of Cyrillic Domain Names in .RF TLD

On November 25, 2009, Russia will start priority registration of Cyrillic domain names on behalf of trademark owners. The priority registration will end on March 25, 2010.

The domain name application must be based on a trademark which is in Cyrillic and which is valid on the date on which a domain name application is filed with the Russian Naming Authority.

The application should be submitted with a copy of the trademark certificate and a copy of the legal entity certificate or an entrepreneur registration certificate.

If the application is based on an International Registration, a certificate showing that the International Registration is valid in Russia should also be submitted.

For more information please contact Aleksandra Noveska at our Macedonia office.

EPO To Help Russia Harmonize Patent Legislation with EU

On November 5, 2009, the European Patent Office (EPO) signed a contract with the European Commission to implement a EUR 500,000 (USD 748,000) project aimed at making the Russian patent legislation more uniform with EU legislation.

The project’s objective is to simplify Russia’s patent application, registration, and processing procedure, facilitate the teaching of Intellectual Property in Russia, and help develop patent guidelines that will be used by patent examiners at the Russian PTO (Rospatent).

This project will run over the next 12 months.

For more information, please contact Jelena Jankovic in our Balkan Regional Office.

October 21, 2009

Moscow Police Seize 200,000 Pirated DVDs

More than 200,000 counterfeit DVDs, worth more than 40 million rubles (USD 1.3 million, EUR 900,000) have recently been confiscated in a three-week operation targeting Moscow’s markets.

On September 24, 2009, a police spokesman stated that the authorities had carried out dozens of raids across the Russian capital, preventing the activities of several criminal groups. Twenty criminal cases have been opened since, targeting suspects in the sale of fake DVDs, including local cinemas and its employees.

For more information, please contact Jelena Jankovic in our Balkan Regional Office.

September 25, 2009

German Retailer Successfully Claims Its Trademark in Russia

After years of dispute, in July 2009, the Russian Chamber of Patent Disputes awarded the major German retailer, Aldi Einkauf GmbH (Aldi), the registration of the Aldi trademark.

This decision follows after a lengthy dispute between the German retailer and the local Russian company that registered Aldi mark in 2000, along with other brand names such as Forbes, Interbrand, Samsung, Audi, Bridgestone, etc.

Aldi Einkauf GmBH filed for the registration in summer 2008, when the Aldi trademark registration, belonging to the local Russian company, expired.

Nonetheless, the local Russian company filed for registration renewal in the fall 2008, after the Aldi Einkauf GmBH had already filed its application.

The Russian PTO granted the renewal to the local Russian company in the fall 2008, at which time Aldi Einkauf GmBH filed a cancellation action with the Russian Chamber of Patent Disputes.

In July 2009, the Chamber of Patent Disputes decided to grant the trademark to the German company.

RU MARKS, a company that specializes in trademark registration in Russia, announced that Aldi is now officially the registered mark owned by Aldi Einkauf GmBH in the following classes: 4, 7, 9, 38, 39 and 40. Four more applications are still pending, but are expected to be processed by the end of the year.

According to Vedomosti, the Russian daily business newspaper, Mr. Viktor Chernyshev, the owner of the local Russian company that used to hold the right to the mark Aldi, said in April 2008, that he does not see how he could have violated the rights of Aldi Einkauf GmbH. “How could I have violated any rights when the company is not present in the market? No company - no violation, ” he said, adding that he is always ready to negotiate.

Aldi stands for Albrecht Discount, as it was founded by brothers Theodore and Karl Albrecht. According to Forbes, Aldi’s turnover in 2007 was USD 67 billion.

For more information, please contact Masa Lopicic in our Balkan Regional Office.

July 21, 2009

Russian PTO Issues Clarification on Revocation Procedures for Non-Use of Trademarks

Due to the lack of clear criteria, see our May article, the Russian PTO has recently issued a list of guidelines in order to clarify what constitutes sufficient interest for filing a request for trademark revocation due to non-use.

According to the current Russian IP legislation, only interested third parties may file a revocation request against a registered trademark that has not been used in Russia for the goods or services it was registered for.

The Russian PTO determines sufficient and legitimate interest on a case-by-case basis, examining all presented evidence according to the following criteria.

1. Only persons that can legally apply for a trademark can file revocation requests. The following can register trademarks in Russia: legal entities (both commercial and non-commercial), and self-employed persons.

2. Patent attorneys, lawyers and any physical persons providing legal services or authorized to act on behalf of third parties are not considered to have legitimate interest.

3. The mere fact of filing a revocation request and paying corresponding official fees is not considered a proof of legitimate interest.

4. The mere fact that the applicant filed a trademark application that is confusingly similar to the trademark that is being revoked is not considered a sufficient proof of legitimate interest.

5. The purpose of the mandatory use of trademarks is to protect those who have expended time, effort, ingenuity and money to disseminate a mark and build up goodwill in relation to it. Accordingly, the following categories of persons may be considered to hold legitimate interest:

• Producers of goods and services labeled with the trademark that is being revoked, provided that they have a bona fide intention to use the mark in Russia.

• Holders of the company’s name (commercial and non-commercial organizations), which is identical or confusingly similar to the mark that is being revoked, if these companies provide the same services or produce and commercialize identical or similar goods to the goods and services covered by the trademark that is being revoked.

• Legal entities and self-employed persons that are proprietors of commercial designations that are confusingly similar or identical to the mark that is being revoked, provided that those persons undertake their commercial activities in relation to the goods and services that are identical or similar to the goods and services protected by the trademark that is being revoked.

• Owners of the similar or confusingly similar trademarks registered for similar or identical goods and services in other countries, provided that they intend to expand geographical scope of the protection of their marks to the territory of the Russian Federation.

The Russian Chamber of Patent Disputes (CPD) will analyze submitted documents to determine whether parties exhibit sufficient interest. If the party filing a revocation request fails to submit sufficient proof of legitimate interest, the revocation request will be rejected by the CPD.

For more information, please contact Alissia Shchichka in our Brussels office.

June 25, 2009

Estonia, Russia and Slovakia Accede and Ratify International IP Treaties

As reported by the World Intellectual Property Organization (WIPO), Estonia, Russia and Slovakia have recently ratified various international IP treaties and conventions.

On May 12, 2009, Russia acceded to the Patent Law Treaty, adopted at Geneva on June 1, 2000. The Treaty will enter into force in Russia on August 12, 2009.

On the same day, Slovakia acceded to the International Convention for the Protection of New Varieties of Plants as revised on March 19, 1991. The Convention entered into force in Slovakia on June 12, 2009.

On May 14, 2009, Estonia ratified the Singapore Treaty on the Law of Trademarks, adopted at Singapore on March 27, 2006. The Treaty will enter into force in Estonia on August 14, 2009.

For more information, please contact Jovana Miocinovic in our Balkan Regional Office.

May 12, 2009

Russia Adopts Strict Position on Revocation Procedures for Non-Use of Trademarks

The Russian Chamber on Patent Disputes, an appeal body of the PTO, has recently adopted a strict position on trademark revocation procedures.

As of January 1, 2009, the Chamber began rejecting revocation requests that could not be substantiated.

Russia’s strict new practice was caused by the high number of revocation requests filed in bad faith, with the sole intention of blackmailing legitimate trademark holders, who may prefer to pay a certain amount of money rather than go through cumbersome proceedings to prove use.

Under the previous Russian Trademark Law, any person could file a request for trademark revocation if such a trademark had not been used for a continuous period of three years.

After the new Russian IP legislation came into force on January 1, 2008, only interested persons were allowed to file revocation requests. However, the law did not define “an interested person.”

As of today, there is still no clear definition of what constitutes sufficient interest to file a request for trademark revocation due to non-use.

Since there are no clear guidelines, it is recommended that parties requesting revocation prove that they produce and/or market the trademarked goods in Russia, or have a bona fide intention to do so.

This can be proved with invoices, customs declarations, advertising materials, marketing research, dealers and distributors contracts and any other documents evidencing that applicants’ goods and services have been, or are intended to be released into the Russian market.

In addition, it is recommended that those requesting revocation submit samples of product packaging, labeled with the trademark in question.

For more information, please contact Alissia Shchichka in our Brussels office.

April 14, 2009

Russian Law on Patent Attorneys Enters into Force

The Law on Patent Attorneys entered into force in the Russian Federation on March 31, 2009. It aims to improve legislative provisions for the protection of intellectual property rights, and it specifies the requirements that patent attorneys must meet.

Accordingly, patent attorneys need to validate their qualifications by registering with the Roster of Patent Attorneys of the Russian Federation and by earning an appropriate certificate.

They should also be permanent residents of the Russian Federation, hold a university degree and show at least four years of professional experience. They are entitled to be self-employed or to work as contracted employees.

In addition, the law allows patent attorneys to establish public unions and self-regulated organizations.

Persons whose activities were discontinued by a court decision, and who were removed from the Roster of Patent Attorneys, cannot be attested as patent attorneys. Civil and municipal servants cannot register as patent attorneys either.

For more information, please contact Jovana Miocinovic in our Balkan Regional Office.

February 16, 2007

Russian School Headmaster Found Guilty for Using Pirated Microsoft Software But No Penalty Imposed

Judge declares Microsoft’s loss was insignificant compared with its overall earnings.

While the headmaster was found guilty of installing Microsoft software on 12 school computers, the judge found that the estimated $9700 damage to Microsoft was insignificant.

The case has been closely watched as a test of how Russia will enforce IP rights as it moves closer to the WTO membership. To the Russian public the headmaster, who like most academics in Russia gets by on a small salary and was facing a five year sentence if convicted, became a local hero. The case even drew attention of President Vladimir Putin who called the case “utter nonsense.”

For more information on IP protection in Russia, please contact Tanja Diklic. For more information on this particular news piece, please go here.

October 22, 2004

Russia Amends its Copyright Law

Copyright law amendments bring Russia's IP legislation in line with its Constitution, as well as with various international agreements.

A number of amendments to the Russian Federal Law on Copyright and Neighboring Rights were recently adopted in order to bring the Intellectual Property legislation of Russia in line with its Constitution, as well as with various international agreements such as the Berne Convention, TRIPS, WIPO Copyright Treaty and WIPO Performances and Phonograms Treaty.

The amendments entered into force on July 28, 2004, with the exception of those articles that relate to the right of making the copyright work available to the public via the Internet, which are expected to enter into force on September 1, 2006.

One of the most important amendments is the extension of the term of copyright protection. The present law extends the former maximum term of the copyright from the life of the author plus 50 years to the life of the author plus 70 years. Foreign authors will now enjoy the same term of protection in Russia as they enjoy in their own country.

In addition, the new amendments improve and strengthen the remedies for copyright infringement. Copyright holders will now be able to demand higher compensation, from approximately 340 USD to 170,000 USD, instead of seeking damages, which are generally very difficult to determine.

The new Law also prohibits actions aiming at the circumvention of technical copy protection systems and devices.

For more information on the changes to the Russian copyright law, please contact our Russia representative.