Product cards blocked on a marketplace due to IP violations: what should you do?

Marketplaces have become powerful platforms where numerous companies and individual entrepreneurs sell products and interact with customers online. According to 2024 statistics, 84% of Russians shop on marketplaces, with 80% making purchases more than twice a month. This popularity often leads to violations of intellectual property rights and the misuse of trademarks. As a result, intellectual property infringements are one of the most common reasons for product listings being blocked on marketplaces. This article will explore what steps can be taken to unblock products.

Why Do Marketplaces Block Products?

In accordance with Article 1253.1 of the Civil Code of the Russian Federation: “an information intermediary that provides the opportunity to place material in an information and telecommunications network shall not be liable for the violation of intellectual rights that occurred as a result of the placement of material in an information and telecommunications network by a third party or at its direction, provided that the information intermediary simultaneously complies with the following conditions:

1) he did not know and should not have known that the use of the relevant result of intellectual activity or means of individualization contained in such material is unlawful;

2) in the event of receipt of a written statement from the copyright holder about the violation of intellectual rights indicating the page of the website and (or) the network address on the Internet where such material is posted, he promptly took the necessary and sufficient measures to stop the violation of intellectual rights. The list of necessary and sufficient measures and the procedure for their implementation may be established by law."

Since marketplaces are not interested in litigation, upon receiving a claim from the copyright holder, online platforms try to take all possible and dependent actions aimed at eliminating the violation. You can read more about this topic in the article “(Without) responsibility of marketplaces” by the head of the legal department Roman Larshin.

In this regard, one of the actions of marketplaces is blocking product cards. At the same time, this blocking is not hopeless, the alleged violator is given the opportunity to provide his vision of the situation. In case of a positive outcome, the product cards can be unblocked.

Steps to Take When Product Cards Are Blocked

Popular marketplaces such as Ozon or Wildberries have developed a special procedure that allows copyright holders to promptly report violations of their rights, and, accordingly, the alleged violating sellers to quickly respond to the received claim. For example, on the Wildberries marketplace, this procedure is called "digital arbitration". On the Ozon marketplace, the seller is asked to provide permission to use the result of intellectual activity and/or means of individualization.

One of the options offered by, for example, the Ozon marketplace is the provision of supporting documents.

Trademark: According to Article 1481 of the Civil Code of the Russian Federation, a trademark certificate certifies the priority of the trademark and the exclusive right to the trademark in relation to the goods specified in the certificate. Thus, if the seller applies his own trademark to the goods, it is necessary to provide the corresponding certificate issued by Rospatent.

Copyright: Copyright in a work initially arises for its author from the moment of creation of the work by creative labor in objective form. Taking this into account, authorship of a specific person can be established only by evidence confirming the fact of creation of the work by a specific person (for example, witness testimony, publications, drafts, evidence based on the establishment of the creative style of the author, the author's statement, a certificate of deposit, etc.).

Patent: According to Article 1354 of the Civil Code of the Russian Federation, a patent for an invention, utility model or industrial design certifies the priority of the invention, utility model or industrial design, authorship and exclusive right to the invention, utility model or industrial design. Thus, if the seller uses his own invention, utility model or industrial design in the product, it is necessary to provide a patent issued by Rospatent.

If you are the purchaser under an alienation agreement based on Article 1234 of the Civil Code of the Russian Federation, such an agreement may also confirm your exclusive right. However, in this case, it should be remembered that the transfer of exclusive rights under the agreement is subject to state registration with Rospatent.

In addition, you may be granted the right to use the result of intellectual activity or means of individualization:

- a trademark on the basis of Article 1489 of the Civil Code of the Russian Federation under a license agreement or on the basis of Article 1027 of the Civil Code of the Russian Federation under a commercial concession agreement;

- an object of copyright or an object of patent law on the basis of Article 1235 of the Civil Code of the Russian Federation under a license agreement.

The granting of the right to use under these agreements in relation to a trademark or an object of patent law is also subject to state registration with Rospatent.

According to paragraph 37 of Resolution No. 10, by virtue of paragraph 6 of Article 1232 of the Civil Code of the Russian Federation failure to comply with the requirement for state registration does not entail invalidity of the contract itself, however, the transfer of exclusive rights or granting of the right to use is considered to have failed. Thus, the provision of these contracts can also be a confirmation on the basis of which product cards can be unblocked.

Exhaustion of Exclusive Rights

According to Article 1487 of the Civil Code of the Russian Federation: “The use of this trademark by other persons in relation to goods that were introduced into civil circulation on the territory of the Russian Federation directly by the copyright holder or with his consent does not constitute a violation of the exclusive right to a trademark.”

Thus, if you purchased an official product directly from the copyright holder or from a person who purchased the product from the copyright holder, you can provide:

- an agreement with documents evidencing the execution of such an agreement, confirming the transfer of ownership of the goods directly from the trademark owner.

- an agreement and documents confirming the chain of rights of transfer of ownership of the goods from the trademark owner to another person, from another person to you.

Ozon website specifies in detail which documents must be submitted depending on the moment of transfer of ownership of the goods.

The Right of Prior Use of An Invention, Utility Model or Industrial Design

According to Article 1361 of the Civil Code of the Russian Federation: “A person who, prior to the priority date of an invention, utility model or industrial design (Articles 1381 and 1382), has in good faith used on the territory of the Russian Federation an identical solution created independently of the author or a solution that differs from the invention only in equivalent features (clause 3 of Article 1358), or has made the necessary preparations for this, retains the right to further free use of the identical solution without expanding the scope of such use (the right of prior use).”

According to the meaning of the given norm, prior use is the right to use an identical solution free of charge in a certain volume and without expansion of such use. The rights of the prior user are limited to the volume of application of the identical solution that was achieved by him on the priority date, or, if the use was not started before this date, to the volume corresponding to the preparations made.

In accordance with paragraph 126 of Resolution No. 10: “The right of prior use arises not by virtue of a court decision, but in the presence of the conditions specified in paragraph 1 of Article 1361 of the Civil Code of the Russian Federation, therefore the fact of prior use may serve as the basis for the defendant’s objection to a claim for violation of the exclusive right to an invention, utility model or industrial design, and also serve as the basis for filing an independent claim (including a counterclaim) in court for recognition (establishment) of the right of prior use.”

According to paragraph 128 of Resolution No. 10, “by virtue of paragraph 1 of Article 1361 of the Civil Code of the Russian Federation, the right of prior use arises for a person who has made the necessary preparations for the use of a technical solution identical to that protected by a patent for an invention or utility model, or a solution identical in appearance to that protected by a patent for an industrial design, or a solution that differs from the invention only in equivalent features.”

As explained in the Review of judicial practice in cases related to the resolution of disputes on the protection of intellectual rights, approved by the Presidium of the Supreme Court of the Russian Federation on September 23, 2015, “to assess the scope of the right of prior use, it is necessary to take into account not only the actual use of the object of exclusive rights, but also the preparations made for this”

Thus, one of the ways to unblock goods is to provide documents confirming the use of the object before the priority date of the invention, utility model or industrial design. Such evidence may be: invoices, consignment notes, models (stencils) for the manufacture of disputed goods, screenshots of Internet pages indicating that you used the goods before the priority date (for example, any information from marketplaces).

Patent Attorney's Opinion

Any claim filed by the copyright holder of the result of intellectual property and/or means of individualization, prior to the establishment of the circumstances of the infringement by the court, is the subjective opinion of the copyright holder.

As another alternative, marketplaces allow you to provide a conclusion from a patent attorney - a person who has confirmed the necessary qualifications and experience in the field of activity of a patent attorney in accordance with the specialization in which the citizen expresses a desire to be certified and registered as a patent attorney, and corresponding to the requirements of the Federal Law of the Russian Federation of 30.12.2008 No. 316-FZ "On Patent Attorneys".

For example, in relation to trademarks, such a conclusion may relate to establishing the dissimilarity of designations to the point of confusion, and in relation to patents – to the absence of the use of a formula (invention, utility model) and essential features (industrial designs) in the seller’s goods.

Our company also provides services for the preparation of patent attorney reports.

Thus, this article has considered the methods that can be taken when blocking goods on marketplaces, however, in this case, it is necessary to remember that:

- unblocking of goods is carried out at the discretion of the marketplace;

- unblocking of goods does not mean the absence of a possible violation of exclusive rights to the results of intellectual activity and means of individualization, until such circumstances are established by the court;

- each situation is individual and when choosing a defense strategy it is necessary to take into account all the circumstances of the case.

We hope that the information provided in this article was useful and informative for those who have encountered blocking of goods on the marketplace due to violation of intellectual property rights.