Protection of Intellectual Property Rights Infringed in Russia

Pre-trial procedure for protection 

The pre-trial procedure involves fixing the fact of violation, sending a claim to the violator and an attempt to resolve the dispute without going to court.  

1. Fixation of the violation

This can be: 

• a notarized protocol of the site or marketplace inspection; 

• screenshots, videos, links, information from search engines; 

• samples of counterfeit products; 

• data from the Unified State Register of Legal Entities, Rospatent, Whois (for domains). 

It is desirable to use the most formalized and reproducible evidence suitable for further presentation in court or departments. 

2. Sending a claim to the violator

The claim is drawn up in writing and contains: 

• information about the right holder and the IP object; 

• description of the violation; 

• references to the legal basis (articles of the Civil Code of the Russian Federation, registration, authorship); 

• Claims (termination, compensation, removal of content, etc.) 

• A deadline for voluntary settlement. 

Copies of certificates, evidence of violation, calculation of damages or justification of compensation are attached to the claim. 

Terms and consequences of ignoring

The response time to a claim is usually from 10 to 30 calendar days. In case of ignoring or refusal to voluntarily settle the dispute, the dispute goes to court. 

 Compliance with the claim procedure is mandatory. 

Alternative forms of pre-trial settlement

• Negotiations between the parties with the execution of the agreement; 

• Mediation is a voluntary procedure with the participation of a neutral intermediary; 

• Revocation of the violation: voluntary removal of content, abandonment of the domain, discontinuation of the product.

Judicial protection of intellectual property rights 

Judicial protection allows you to achieve the cessation of violations, the seizure of counterfeit products, compensation for losses or payment of compensation. The judicial procedure is relevant when the violator refuses to voluntarily settle the dispute or in case of systematic violations. 

Competent courts

Depending on the nature of the dispute, the case may be considered: 

• arbitration courts – if both parties are legal entities; 

• courts of general jurisdiction – if one of the parties is an individual; 

• The Intellectual Property Court (IPC) – in disputes related to challenging decisions of Rospatent, cancellation of registration, invalidation of rights, etc. 

Types of claims

The right holder can make the following claims: 

• on the termination of the use of the IP object; 

• for the recovery of compensation or damages; 

• on the destruction of counterfeit products; 

• on the publication of a court decision in order to restore business reputation; 

• appeals against decisions of Offices (e.g., refusal of registration or refusal of cancellation). 

Amount of compensation

Instead of damages, the plaintiff may claim compensation: 

• in a fixed amount - from 10,000 to 5,000,000 rubles; 

• double the value of counterfeit goods; 

• in the double amount of the cost of the right to use the object. 

Compensation can be recovered even if there is no actual damage. 

Evidence in court

For successful collection, it is necessary: 

• document the existence of rights (certificates, contracts, publications); 

• record the fact and extent of the violation; 

• to substantiate the nature and scale of the consequences; 

• if necessary, involve specialists, technical experts, notaries. 

Practice and trends

Russian courts generally support copyright holders, especially when there are registration certificates and clear evidence of infringement. At the same time, compensation collected in favor of large brands can reach tens of millions of rubles.

Administrative and Other Remedies 

In addition to court proceedings, Russian legislation provides for administrative and extrajudicial mechanisms for the protection of intellectual property rights. These measures often allow for a quick response to violations, especially in cases of online violations, customs controls, or unfair competition. 

Complaints to Rospatent

Rospatent considers: 

• objections to the registration of trademarks; applications for cancellation of rights to IP objects; 

• disputes over unfair registration; 

• complaints about the actions/inaction of experts. 

Decisions of Rospatent can be challenged in the intellectual property court. 

Appeals to the FAS (Federal Antimonopoly Service)

The FAS considers cases on: 

• unfair competition; 

• use of someone else's brand, design, slogans, packaging without the consent of the copyright holder; 

• misleading consumers about the product, manufacturer, right of use. 

The FAS can issue a warning, an order to stop the violation and impose a fine. 

Blocking infringing content (Roskomnadzor)

In case of violations on the Internet (for example, pirated software, unauthorized copies, photos, videos): 

• you can send a complaint to Roskomnadzor; 

• blocking is carried out by a court decision or as part of an administrative procedure; 

• It is effective in protecting copyright and related rights, domain names, and content. 

Customs protection — TROIS

The inclusion of an IP object in the Customs Register allows: 

• to prevent the import of counterfeit goods; 

• receive notifications when attempts are made to cross the border with products containing protected elements; 

• if necessary, initiate administrative proceedings and the seizure of a batch of goods.

Appeal against actions and inaction of state bodies 

In a number of cases, violations of intellectual property rights may be related not to the actions of third parties, but to the decisions or inaction of state bodies. Such situations require a separate approach and specific appeal procedures. 

Appealing against decisions of Rospatent

Typical grounds: 

• refusal to register an IP object; 

• registration of a similar designation in favor of a competitor; 

• rejection of the application for cancellation of rights; 

• actions of experts during the consideration of the application. 

Methods of protection: 

• filing an opposition to the Chamber for Patent Disputes (an internal body under Rospatent); 

• appeal against the decision of Rospatent to the Intellectual Property Court (IPC) within 3 months from the date of its adoption. 

Complaints about the actions or inaction of the FAS

If the antimonopoly authority unreasonably refused to consider an application for unfair competition or failed to comply with the order: 

• a complaint is filed with a higher division of the FAS; 

• it is possible to file an administrative claim with an arbitration court in accordance with Chapter 24 of the Arbitration Procedure Code of the Russian Federation. 

Appealing against Roskomnadzor's decisions

Roskomnadzor may refuse to block infringing content or fail to act if there are grounds for protecting rights. Such actions can be challenged: 

• administratively — by filing a complaint with the Ministry of Digital Development of the Russian Federation; 

• in court – in accordance with the procedure established by the Administrative Procedure Code of the Russian Federation (court of general jurisdiction or arbitration, depending on the parties). 

Terms and features

Appeals against the actions and decisions of the departments are filed, as a rule, within 3 months from the moment when it became known about the violation of rights. 

A preliminary pre-trial procedure is mandatory, if it is provided for by law or internal regulations of the authorities.

Indemnification and compensation 

Russian legislation provides a choice between the recovery of real losses and fixed compensation.  

Losses include: 

• real damage is the costs incurred by the right holder in connection with the violation; 

• lost profit is the income that the right holder could receive in the normal use of the IP object (for example, from license fees). 

To recover damages, it is necessary: 

• prove the existence of a violation; 

• to substantiate the cause-and-effect relationship between the actions of the offender and the losses; 

• submit the calculation and supporting documents (contracts, payments, expert opinions). 

This is difficult, especially when assessing lost profits, so in practice, compensation is more often used. 

Fixed compensation

The right holder may demand compensation instead of damages. This does not require proof of damage. 

Compensation can be determined: 

• in a fixed amount from 10,000 to 5,000,000 rubles; 

• double the value of counterfeit goods; 

• in the double amount of the cost of the right to use the IP object. 

The court has the right to reduce the amount of compensation if it considers the claimed amount excessive, but the general trend is to support the interests of the copyright holder in the presence of a violation. 

How the compensation position is formed

In the statement of claim, it is important to: 

• to substantiate the criteria for choosing the form of compensation; 

• indicate why the amount corresponds to the severity and nature of the violation; 

• attach materials confirming the mass nature, repetition, commercial benefit of the violator and other aggravating circumstances. 

Compensation for Internet Violations

Even if the violator is unknown, it is possible to block the resource and subsequently collect it through the hosting operator or by IP, if a legal entity is established.

Specifics of the protection of the rights of foreign companies in Russia 

Foreign legal entities whose intellectual rights are violated in the territory of the Russian Federation have the same rights to protection as Russian right holders. But there are a number of features related to the recognition of rights, procedural representation and international coordination. 

Recognition of the rights of foreign right holders

In accordance with international agreements (Berne Convention, Paris Convention, TRIPS), Russia recognizes: 

• copyright and related rights that have arisen in other countries; 

• international trademark registration (through the Madrid System); 

• priority of a foreign application when filing in the Russian Federation (Paris Convention). 

But for protection within the framework of Russian procedures, registration of an IP object in the Russian Federation or recognition of the right through Rospatent is in most cases mandatory. 

Representation in Russian courts and departments

A foreign company can: 

• act through a patent attorney registered in the Russian Federation; 

• conclude an agreement with a law firm; 

• to use procedural representation in courts on the basis of a power of attorney. 

Direct submission of applications to Rospatent by a foreign person is not allowed - filing through a representative is mandatory. 

Translation and legalization of documents

Documents issued outside the Russian Federation: 

• are provided with a notarized translation; 

• if necessary, with an apostille or consular legalization; 

• when filing a lawsuit, they are drawn up in accordance with the Civil Procedure Code or the Arbitration Procedure Code of the Russian Federation. 

Methods of protection

A foreign right holder has the right to: 

• file lawsuits in Russian courts at the place of violation; 

• initiate the blocking of infringing content; 

• to include objects in the Customs Register of the Russian Federation; 

• participate in the cancellation of other people's registrations in Rospatent; 

• seek compensation under Russian law. 

International coordination and parallel actions

• Protection can be synchronized with actions in other countries; 

• International legal assistance, Interpol tools, WIPO ALERT are used; 

• The practice of the ECHR, the Court of Justice of the European Union, and the national courts of the countries of origin is taken into account.