IP protection in Russia in 2023: Q&A after INTA Annual Meeting

After 4 years of not being in-person at INTA, it was a great pleasure to see our colleagues from all over the world in real life.

INTA 2023 Annual Meeting

The majority of IP specialists who met their Russian colleagues had a question about the protection of IP rights in Russia after the war started and many sanctions were imposed against Russia.

• Can IP still be protected in Russia? (After the Peppa Pig court case?)

• Did the Russian Government impose any counter sanctions against Western countries, which reflected IP?

• Should companies which stopped selling goods to Russia be afraid of cancelling its trademarks for non-use in a couple of years?

As answers to these questions may be interesting for many companies, I decided to write this article. 

There are many IP practitioners who have been writing about the Peppa Pig case, informing readers that Russian courts stopped protecting IP rights.

But this case was overturned more than a year ago, the Court of Appeal stopped the defender from illegal use of the Peppa Pig trademark and judged monetary damages in favor of the UK owner.

Within the past year, we have been handling several cases for western owners and successfully protected IP rights of owners from USA, Germany, Spain, etc.

At the end of last year, the Head of Russian Intellectual Property Court Mrs. Ludmila Novoselova gave a comment during her interview to the Russian Agency of Legal and Court Information (RAPSI). She stated that the protection of IP in Russia should not depends on the country where the owner comes from. Russian courts should protect IP equally for the owners from different countries.

Regarding the sanctions. Fortunately for all of us, IP was excluded from the sanction list of Western countries. Also, the Russian Government didn’t impose any (almost any) sanctions against IP owners from Western (sanctioned) countries. 

Now there are 2 sanctions which really may effect owners from Western countries:

• Parallel import of some goods. The Russian Government made a list of the goods/trademarks which are allowed for import into Russia in spite of trademark owners consent/permission. The list contains cars, smartphones, computers etc.

• Use of the copyright which is allowed for use without the owners’ permission, but with mandatory payment for use to the owner. The Russian Government allowed the user (generally these are organizations collecting payments for owners for such allowed use) to make payments to the so called Type-“0” accounts opened in names of IP owners in any Russian bank. The owner may collect money from this account whenever he decides.

Cancelling the trademark for non-use. There is a number of companies which stopped selling goods to Russia after the war started in February 2022. And certainly, they feel anxious about what will happen with their trademarks in 2 years’ time as the non-use period to cancel a trademark in Russia is 3 years?

There are two options which may be helpful to avoid the possibility of losing a trademark:

• Filing a new trademark application every 1,5 – 2 years for the variant of the trademark. It should be slightly different to the trademark, which is already protected: different color of all words/letters, adding some image into a trademark, etc.

• The goods may be sold to Russia via other countries, maybe via parallel import. The original goods sold to Russia and distributed in Russia will be proof of use of the trademark in question. 

Most of the colleagues I met asked if the Russian IP Court would accept the present situation with sanctions as an excuse to the owner to not be able to use the trademark.

We cannot say for sure how the IP Court would judge such an argument, but most possibly the sanctions of foreign governments which stopped selling some goods to Russia or their own company decision of not selling goods to Russia would not be accepted as an excuse for non-use of a trademark because of circumstances beyond the owners’ control.

The IP Court will count that the Russian Government didn’t make any sanctions which didn’t allow an owner to sell goods to Russia.

As an example, I would refer to two court cases for cancelling the trademark for non-use which happened about 6-10 years ago.

In one case (No. А40-85638/2012), the owner of the trademark was a Georgian company which owns a trademark for the alcohol goods of class 33 (wine). The court rejected to cancel the trademarks and stated that the trademark owner could not use its trademarks due to the decree of the Russian Government which forbids to import Georgian wine and other food products from Georgia in 2008 - this sanction was in power for about 6-8 years.

In the second case (No. SIP-601/2017) the court made a similar statement rejecting the claim of Danone Russia to cancel the trademark of Molkerei Alois Muller GmbH & Co. KG for milk products.