Inclusion of a trademark in the customs register in Russia: functions and features of the procedure

The role and significance of intellectual property objects (IPO) in the economy and society becomes more and more important and significant every year. In developed countries, it is IPO and innovation that form the majority of the country's gross domestic product. The share of the innovation sector is growing every year, causing the process of intellectualization of the world economy.

In addition, the volume and variety of methods of violating the rights to the results of intellectual activity and means of individualization are growing. The creation of intellectual property involves significant costs, but at the same time, objects are easily replicated and reproduced in violation of the rights of copyright holders. Products related to intellectual property are the most vulnerable and require state protection and protection.

It is important to competently carry out the movement and control of intellectual property. For these functions, the Customs Register of Intellectual Property Objects (hereinafter referred to as TROIS, the Register) is used.

TROIS is one of the mechanisms that allows for customs control while respecting the rights and interests of intellectual property rights holders included in this Register in the Russian Federation.

Almost all goods moved across the border contain elements of intellectual property or are directly related to them. With the help of TROIS, customs regulation of the turnover of goods containing intellectual property is implemented.

The procedure for maintaining TROIS by the customs authorities is determined in accordance with the Administrative Regulations of the Federal Customs Service for the provision of public services for maintaining the customs register of intellectual property objects dated July 8, 2019 (approved by Order of the Federal Customs Service of Russia dated January 28, 2019 N 131 (registered with the Ministry of Justice of the Russian Federation on June 6, 2019 No. 54861).

The central body authorized to maintain the register is the Federal Customs Service of the Russian Federation, which receives and considers applications:

• for inclusion of intellectual property in the Register on the basis of applications from copyright holders (their representatives);
• on extending the deadline for entering IP into the register;
• on the exclusion of IP from registers;
• on making changes and additions to the registers;
• publication of a list of IP included in registers, bringing these registers to the attention of customs authorities and interested parties;
• taking measures related to the suspension of the release of goods;
• interaction of customs authorities with government bodies, citizens and organizations on issues related to maintaining registers.

Thus, we can highlight several main functions of the TROIS mechanism:

1. The protective function lies in the operation of the TROIS mechanism, used to protect the interests of the copyright holder.
2. The regulatory (control) function is carried out through the activities of the Federal Customs Service when checking goods at the customs border, identifying violations and taking measures to suspend goods, informing the copyright holder.
3. The incentive function is to motivate copyright holders to enter IP into the Register in order to prevent further violation of their rights.
4. The economic function implies a reduction in the financial losses of copyright holders from the penetration of illegal goods into the market and their sale, which could result in a decrease in the share of original goods on the market. Thus, the copyright holder will be able to sell the planned volume of its original products.

Currently, the application and all documents attached to it for the inclusion of IPO in the TROIS can be submitted electronically through a personal account on the website of the Federal Customs Service of the Russian Federation or on paper.

The main IP included in the TROIS: objects of copyright and related rights; trademarks (service marks); appellations of origin of goods.

Copyright holders (Russian and foreign individuals and legal entities, including individual entrepreneurs) can act as applicants for inclusion of IPO in the TROIS. If the copyright holder is a foreign person who does not have the possibility of representation on the territory of the Russian Federation before the customs authorities, the corresponding application is submitted by a representative - a Russian legal entity, or an individual who has Russian citizenship and resides in the Russian Federation, including registered on the territory of the Russian Federation as individual entrepreneurs authorized in accordance with title documents to interact with the Federal Customs Service of Russia on issues related to maintaining the Register.

A document confirming the authority of a representative is a power of attorney.

An application for inclusion of a trademark in the Register must contain the following information about the copyright holder:

1. if an application is submitted by a Russian legal entity, it must be signed by its head or a person authorized by the head and contain the following information: location and address; telephone number, fax number (if available), email address for exchanging information on public services; information on state registration of a legal entity; information about registration with the tax authority as a taxpayer and taxpayer identification number.
2. if an application is submitted by a Russian individual, it must be signed by him personally and contain the following information: last name, first name, patronymic (if any), address of residence; contact telephone number, email address, postal address for exchanging information on public services; number, series of the passport, name of the authority that issued it, date of issue, date and place of birth, registration address at the place of residence, TIN (if any) or relevant details of another identification document.
3. if an application is submitted by a representative of the copyright holder, information about the representative of the copyright holder is indicated in accordance with the information specified in paragraphs 1-2 above;
4. if the copyright holder is a foreign organization, the following shall be indicated: full and abbreviated name of the foreign organization in Russian and foreign languages (in Latin transcription); address of the foreign organization in the country of registration in Russian and foreign languages (in Latin transcription); information about registration based on data from the trade register or certificate of incorporation, or other document of a similar nature of the relevant country of origin, containing information about the authority that registered the foreign legal entity, registration number, date and place of registration;
5. if the copyright holder is a foreign individual, the application shall indicate the surname, full name and address of residence, name and details of his identity document.

The Applicant also provides information about persons authorized by the relevant title document to interact with customs authorities on the issues of taking measures to protect rights to intellectual property, including those related to the suspension of the release of goods that have signs of violation of the rights of the copyright holder to intellectual property.

An application for inclusion of a trademark in the Register must contain the following information about the IPO trademark:

• name and description of the trademark (service mark);
• information about documents confirming the registration of a trademark (service mark) in accordance with the legislation of the Russian Federation and international treaties of the Russian Federation;
• information about agreements on the alienation of exclusive rights in the event that exclusive rights were acquired under such an agreement;
• information about the transfer of the exclusive right to a trademark (service mark) without a contract;
• information about license ( sublicense ) agreements and licensees (sublicensees);
• information about commercial concession agreements (subconcession);
• information on granting the right to use a trademark (service mark) on other grounds provided for by the legislation of the Russian Federation.

An application for inclusion of a trademark in the Register must contain the following information about imported/exported goods:

• information about persons involved in the circulation of original goods and goods that have signs of violation of the rights of the copyright holder, indicating their role (importer, carrier, consignee, manufacturer, exporter);
• information about traffic (transit) routes, types of transport, places of transshipment, storage, places of crossing the customs border of the Eurasian Economic Union, places of customs operations and customs control;
• information about the distinctive features and characteristics of goods (for each type of product);
• description of goods and individual components, images and diagrams in JPEG format;
• features of transportation of goods, type of packaging, identification numbers, imitation of security markings, barcodes , images and diagrams in JPEG format;
• information about the documents accompanying the goods and their distinctive features;
• information about identified cases of violation of the rights of the copyright holder (provided if this information is available).

Information about goods is generated indicating product codes in accordance with the unified Commodity Nomenclature of Foreign Economic Activity of the Eurasian Economic Union at the level of the first four characters, based on the list of goods in respect of which cases of violation of the rights of the copyright holder have been identified, indicating for the trademark (service mark) classes of international classification of goods and services, in respect of which a trademark (service mark) is registered and the corresponding goods are introduced into civil circulation.

Please note that the application must indicate the period during which the customs authorities need to protect the rights to the trademark specified in the application. The period of protection by customs authorities of the right holder's rights to a trademark is established when it is included in the Register, taking into account the period specified in the application (taking into account the validity period of the documents attached to it, that is, the certificate for the trademark), but not more than three years from the date of its inclusion in Registry .

Regardless of the IPO, the following documents are attached to the application: power of attorney (as indicated above); obligation of the copyright holder to compensate for property damage that may be caused to the declarant, owner, recipient of goods or other persons in connection with the suspension of the release period of goods; the charter and constituent documents of the copyright holder and the representative of the copyright holder (if the application for inclusion of IP in the Register is submitted by the representative of the copyright holder) if the Applicant is a legal entity; a copy of the passport or other identification document of the Applicant, if the Applicant is an individual ; an extract from the trade register or a certificate of incorporation or other document of the relevant country of origin containing information about the authority that registered the foreign legal entity, the registration number, the date and place of registration; a document confirming insurance of the copyright holder's liability for damage that may be caused to the declarant, owner, recipient of goods or other persons in connection with the suspension of the release of goods (insurance agreement, insurance policy) with confirmation of payment of the insurance premium (if available at the time of filing the application for inclusion of IP in the Register).

In relation to a trademark, the following documents are provided: certificate for a trademark (service mark); certificate of trademark based on information from the State Register of Trademarks and Service Marks of the Russian Federation; a certificate of a well-known trademark based on information from the List of well-known trademarks in the Russian Federation; documents on the availability of legal protection of a trademark (service mark) in the Russian Federation by virtue of international treaties of the Russian Federation; agreement on the alienation of the exclusive right to a trademark (service mark) (on the assignment of a trademark (service mark); license (sublicense) agreements granting the right to use a trademark (service mark); commercial concession agreements; documents confirming the transfer of the exclusive right to a trademark mark (service mark) without a contract.

The above documents are presented in the form of originals or copies certified by the person who submitted them, by the authorized bodies that issued such documents, or certified by a notary, or in the form of electronic documents signed with the electronic signature of the person who submitted the documents using the Personal Account.

The period for consideration of an application for inclusion of a trademark in the Register cannot be more than three months.

If the documents and information submitted by the Applicant are insufficient to make a decision to include the trademark in the Register, the period for consideration of the application is extended until the requested additional information is submitted, but no more than two months after the day the request was sent.

The inclusion of a trademark in the TROIS has become an important and necessary mechanism for preventing violations of the rights and interests of copyright holders. The use of such measures by customs authorities to protect intellectual property rights is becoming increasingly popular among Russian and foreign copyright holders. However, the procedure for entering a trademark into the Register requires careful collection of all necessary documents and information so that the process is efficient and effective.