Trademark Infringements on Marketplaces and Methods of Combating Them

In recent years, the rapid development of e-commerce and the growing popularity of marketplaces have significantly transformed the structure of trade and the ways in which sellers and buyers interact. Platforms acting as intermediaries between sellers and consumers provide broad access to goods; however, they also create new risks associated with potential trademark infringements.

One of the most pressing issues is the proliferation of counterfeit products and the unlawful use of designations confusingly similar to registered trademarks. In this regard, the question arises as to how to combat sellers distributing counterfeit goods and imitating well-known brands.

It should be noted that, pursuant to Article 1484 of the Civil Code of the Russian Federation, the person in whose name a trademark is registered (the right holder) has the exclusive right to use the trademark in accordance with Article 1229 of the Code in any manner not contrary to law (exclusive trademark right), including the methods specified in paragraph 2 of this Article. The right holder may dispose of the exclusive right to the trademark.

The exclusive right to a trademark may be exercised for the purpose of individualizing goods, works, or services in respect of which the trademark is registered, in particular by affixing the trademark:

• to goods, including labels and packaging of goods that are manufactured, offered for sale, sold, displayed at exhibitions and fairs, or otherwise introduced into civil circulation within the territory of the Russian Federation, or stored or transported for this purpose, or imported into the territory of the Russian Federation;
• when performing works or providing services;
• in documentation related to the introduction of goods into civil circulation;
• in offers for sale of goods, performance of works, or provision of services, as well as in advertisements, signs, and promotional materials;
• on the Internet, including in domain names and other addressing methods.

No one may use, without the authorization of the right holder, designations similar to its trademark in relation to goods for which the trademark is registered, or similar goods, if such use is likely to cause confusion.

Out-of-court enforcement: complaints and automation

When counterfeit goods are identified on marketplaces, the right holder may ask: how can I protect my trademark rights?

The answer depends on the goals pursued by the right holder and the time and financial resources they are willing to invest: whether they aim to remove listings of counterfeit goods or also seek to recover compensation from the infringer; whether they are prepared to pursue a court injunction or prefer to minimize costs.

Depending on these objectives, the available enforcement tools may vary.

For example, if the right holder seeks the fastest possible removal of counterfeit listings, one effective tool is filing a complaint through the internal arbitration mechanisms of marketplaces.

As a rule, this involves submitting a complaint regarding infringement through internal forms available on various platforms (such as Wildberries, Yandex Market, MegaMarket, etc.).

Such complaints typically result in the removal of infringing content, provided they are well substantiated.

This method is particularly relevant in cases involving a large number of violations, although it still requires considerable time to process multiple complaints.

To streamline this process, Zuykov and partners developed the ZIPDetect platform - a technological solution for monitoring and enforcing trademark rights on the Internet and marketplaces.

The platform enables automatic detection of counterfeit goods and trademark infringements on marketplaces (Wildberries, Ozon, Yandex Market, etc.), websites, and domain names; generation of comprehensive reports on identified products and sellers; prompt submission of complaints to remove infringing content; and maintenance of a database of infringers.

Pre-trial procedure and judicial protection

At the same time, it is important to understand that filing a complaint through a marketplace’s internal system does not replace the mandatory pre-trial procedure required in certain cases under Russian law.

One such case is the obligation to send a cease-and-desist letter (claim letter) to the infringer before filing a lawsuit seeking compensation or damages for trademark infringement.

According to paragraph 5.1 of Article 1252 of the Civil Code of the Russian Federation, if both the right holder and the infringer are legal entities and/or individual entrepreneurs, and the dispute is subject to consideration by a commercial (arbitrazh) court, a pre-trial claim must be submitted before filing a lawsuit for damages or compensation.

Recovery of compensation and damages are forms of protection of exclusive rights and constitute liability measures for unlawful trademark use.

Under Article 1515 of the Civil Code, in the event of infringement, the right holder may, at their discretion, claim compensation instead of damages in the following amounts:

• from 10,000 to 10,000,000 rubles;
• double the value of the counterfeit goods;
• double the value of the right to use the trademark, determined based on the price that would normally be charged under comparable circumstances for lawful use of the trademark in the manner used by the infringer.

Sending a claim letter may itself serve as a means of protecting rights, particularly when attempting to recover compensation. However, in practice, infringers are often reluctant to satisfy financial claims at the pre-trial stage, and therefore, such a letter usually serves as a necessary procedural step before filing a lawsuit.

It should also be taken into account that litigation entails significantly higher costs compared to filing complaints through marketplace mechanisms, and is therefore not always the most practical solution in cases of trademark infringement on marketplaces.

Thus, the protection of trademark rights in the context of marketplace infringements is flexible and depends directly on the right holder’s objectives. If rapid cessation of infringement is required, out-of-court mechanisms - particularly marketplace internal tools - are the most efficient. If the priority is to hold the infringer liable and recover compensation, compliance with the pre-trial procedure and recourse to the courts is necessary.