Genuine goods produced abroad and being the subject of parallel imports are no longer considered counterfeit by customs officers, are not confiscated, withdrawn from circulation or imposed administrative fines on importers. But importing such a product into our country and putting it into circulation can be expensive for both importers and intermediaries offering the product for sale on the domestic market. According to the provisions of the Civil Code of the Russian Federation, the violator must compensate the copyright holder for losses or pay compensation.

banana edge

Let’s look at where the name “parallel import” came from, as well as who and why prefers to call it “gray”.

As is known, goods of large industrial manufacturers in the territories of other countries they are often distributed through official ones. They can be both legal entities and citizen entrepreneurs. Distributors sell goods marked with the trademark of the copyright holder on certain territory, acting either on its own behalf or on behalf of the copyright holder. In addition to trade intermediation, the distributor often provides other services to the foreign partner within the framework of the contract.

Original goods marked with a trademark with the permission of the copyright holder, which are imported into the territory of another country not by distributors, not by the copyright holder, but by other persons and without special consent for such import from the copyright holder, are called “parallel imports”, because import is carried out not through authorized importers and not by the copyright holder, but through other, alternative, parallel channels, about which the copyright holder may not be aware.

For your information

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In world practice, there are two basic principles of exhaustion (limitations) exclusive rights copyright holders: national and international.

According to the national (territorial), the exclusive rights of the copyright holder to a trademark are recognized as exhausted only upon the introduction corresponding product into circulation within a given state. Even if the product has been repeatedly resold abroad, its import into a country that has a national exhaustion approach is only possible with the permission of the owner trademark.

In accordance with the international principle of exhaustion of rights (applied in China and other countries), the copyright holder, having sold a product in any country, loses the right to tell the new owners how to dispose of this product in the future. New owner has the right, at its discretion, to move goods across borders, introduce them into civil turnover on the territory of other countries, etc.

The regional approach to the exhaustion of rights provides that the introduction of goods into circulation in the territory of one region (for example, in any EU country) entails the exhaustion of rights regarding the subsequent sale of such goods to any of the countries of the union. In addition, with regard to goods imported into European Union original goods are not subject to customs response measures used to protect trademarks.

With the consolidation of the national principle of exhaustion of rights in the national legislation of the Russian Federation in 2002, the activities of many domestic organizations and entrepreneurs were illegal. Importers have an obligation to obtain the consent of copyright holders for the import, storage and introduction of goods into circulation. Such permits are formalized in the form of agreements (on the assignment of rights or on the issuance of a license).

Counterfeit is now not only a fake, but also an original product, as well. Obviously, in order to emphasize in the eyes of ordinary people the illegality of alternative methods of importing goods, “authorized importers”, copyright holders and their consultants, acting in the interests of their foreign partners/clients, now call parallel imports “counterfeiting” or “gray imports”.

The interests of foreign copyright holders were perfectly protected Russian legislator. Now any foreign company has the right to allow the import into Russia only of outdated models or goods of a certain configuration that have been stored in warehouses, i.e. goods with inferior consumer properties(when compared with analogues entering the markets of other countries) while simultaneously setting a higher (compared to the usual) selling price.

Based on the provisions of the Civil Code of the Russian Federation, Russian arbitration courts recognize that the introduction into civil circulation of original products that are not intended for sale on the territory of our country without the consent of the copyright holder violates his exclusive right to the corresponding trademark.

Example 1

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At the beginning of December 2009, the Rospotrebnadzor Department for Kaliningrad region(hereinafter referred to as the Department) received a complaint from citizen D., who found the “Wella” brand on the packaging of goods. Products offered for sale in the store individual entrepreneur(IP). It also followed from the appeal that the consumer was not provided with documentation confirming the right to trade in these products.

Based on this complaint, the department ordered an inspection of the activities of the individual entrepreneur. The store actually found products marked with the “Wella” mark. The department requested information from the copyright holder of this trademark (the Wella Aktiengesellschaft company) about the rights of individual entrepreneurs to introduce goods under the Wella trademark into civil circulation on the territory of the Russian Federation. A few days later, the Office received an application from the copyright holder to bring the individual entrepreneur to administrative responsibility for illegal use someone else's trademark. This product was seized by the individual entrepreneur.

The department appealed to the arbitration court with a statement to bring the individual entrepreneur to administrative liability under Art. 14.10 Code of Administrative Offenses of the Russian Federation. First court satisfied the requirements stated by the Department, establishing the guilt of the individual entrepreneur and appointing administrative punishment in the form of a fine of 10 thousand rubles. with confiscation of goods. However, the appellate court overturned this decision. The cassation instance came to the same conclusions as the court of second instance: the presence of an administrative offense in the actions of the individual entrepreneur was not proven.

The fact is that the main evidence when drawing up a protocol on administrative offense became expert opinion patent attorney of the Russian Federation. The conclusion stated that the product under investigation, which does not correspond to the original product offered for sale by the copyright holder or with his permission on the territory of the Russian Federation, has signs of counterfeiting. However, no product research was carried out! The expert had photographs at his disposal, which, in the opinion of the judges, did not allow establishing the quality of the materials used in the manufacture of the goods.

In the case, there was no indisputable evidence that the goods were not manufactured by Vella Aktiengesellschaft and that its trademark was illegally applied to products of unknown origin. The signs of counterfeiting indicated by the expert were regarded only as evidence that the goods were not intended for sale in Russia.

The misadventures of the IP did not end there. Considering his rights to the exclusive use of the trademark to be violated, the copyright holder also appealed to the arbitration court. The plaintiff demanded that the individual entrepreneur be prohibited from taking actions to introduce into civil circulation goods marked with the Wella trademark. As compensation for violation of exclusive rights to a trademark, the copyright holder asked to recover 300 thousand rubles from the individual entrepreneur.

Courts of the first, appellate and cassation authorities came to the conclusion that the actions of the individual entrepreneur to introduce products marked with the “Wella” mark into civil circulation on the territory of the Russian Federation without the consent of the copyright holder were illegal. The claim was satisfied, but the amount of compensation was reduced to 60 thousand rubles.

When making this decision, the evidence collected from the administrative matter. In particular, that the product did not have the “Rostest” sign and the packaging did not contain information in Russian. The authorized importer indicated to the court that he does not import into the territory of the Russian Federation products that do not have information translated into Russian and the “Rostest” sign.

In such circumstances, the judges recognized that the introduction into civil circulation of original products not intended for sale on the territory of the Russian Federation without the consent of the copyright holder violates his exclusive right to the corresponding trademark.

Moreover, while all the proceedings were ongoing, the entrepreneur repeatedly indicated that all products were original and had no signs of counterfeiting; that the products were introduced into civil circulation on the territory of the Russian Federation with the permission of the copyright holder on the basis license agreement, registered with the Federal Service for Intellectual Property, Patents and Trademarks; that the products have certificates of conformity.

In particular, according to the individual entrepreneur, the disputed goods were purchased from another entrepreneur, who purchased products from three LLCs, which, in turn, purchased goods from an authorized importer who had a license agreement with the copyright holder. However, the individual entrepreneur did not have documentary evidence of the legitimate introduction of the goods into civil circulation on the territory of the Russian Federation. The given chain of acquisition of goods was not confirmed by the case materials. The court did not accept a copy of the agreement as evidence. The court did not consider the reference to certificates of conformity as evidence of the existence of legal relations between the three intermediary LLCs and the eligible importer to be an argument in defense of the individual entrepreneur. This argument was found erroneous with reference to Federal Law dated December 27, 2002 No. 184-FZ “On technical regulation" According to Art. 2 said law certificate of conformity is a document certifying that an object meets the requirements technical regulations, provisions of standards, codes of practice or contract terms. Such a certificate only indicates the quality of the product, its compliance with the requirements of the state industry standard(GOST) and about the country of origin of the product, but not about the legality of using the trademark.

In 2003, for operational and effective suppression import of goods is not authorized persons The Federal Customs Service of Russia has created a Customs Register of Intellectual Property Objects. Since that time, our customs authorities have been able to more effectively protect the interests of copyright holders. The latter entered into the register information about trademarks and persons who received permission to use them (move them across the border, put them into circulation). By checking the registry data, customs officers were able to easily identify violating importers.

There are no more fines for “parallel imports”

More recently, based on statements from copyright holders interested in limiting/suppressing parallel imports into the Russian Federation, customs officers initiated cases of administrative offenses against unauthorized importers under Art. 14.10 Code of Administrative Offenses of the Russian Federation. Imported goods were confiscated, and violators paid fines. The courts that considered such cases often recognized the facts of violations, indicating that the import of original goods into the Russian Federation is in an independent way use of a trademark.

However, the practice in such cases was contradictory. Some arbitration courts refused to satisfy the claims customs authorities on confiscation of goods imported without the permission of the copyright holder. For example, if the importer managed to prove that the imported goods were genuine, the judges could point out the absence of what was necessary for prosecution under Art. 14.10 of the Code of Administrative Offenses of the Russian Federation signs of counterfeiting, and therefore objective side offenses. In such cases, the courts understood counterfeit goods as goods that corresponded to the definition given in paragraph 1 of Art. 1515 of the Civil Code of the Russian Federation, i.e. goods, labels, packaging of goods on which a trademark or confusingly similar designation is illegally placed.

There was no uniform judicial practice. Those members of the judiciary who refused to recognize unauthorized importers as violators referred, among other things, to the need to maintain a balance between private and public interests, indicated that the product does not contain signs of illegal reproduction of the trademark, as well as.

Only 02/03/2009 Presidium of the Higher Arbitration Court RF (hereinafter referred to as the HAC RF), having revised in supervisory procedure one of these cases, has now established a generally binding approach to the consideration of these cases. Let us recall the essence of this sensational case.

In 2007, the company imported a PORSCHE CAYENNE S car into the Russian Federation in a condition unsuitable for use. Soon, Porsche Russland LLC (the owner of the exclusive license to use the trademarks “PORSCHE” and “CAYENNE” in the Russian Federation) filed a statement of violation of the right to a trademark to the customs authority. The customs requirement to hold the importer accountable under Art. 14.10 of the Code of Administrative Offenses of the Russian Federation was satisfied by the courts of the first and appellate instance. The importer was fined in the amount of 30 thousand rubles. with car confiscation.

On October 31, 2008, the panel of judges of the Supreme Arbitration Court of the Russian Federation, in ruling No. 10458/08 on transferring the case to the Presidium of the Supreme Arbitration Court of the Russian Federation, indicated: “A set of measures civil liability for violation of the right to a trademark constitutes an independent and sufficient set of means to ensure the protection of the interests of the copyright holder, in connection with which the application of measures public responsibility for such a violation cannot pursue the goal of protecting exclusively the interests of the copyright holder and must be aimed primarily at suppressing illegal behavior, encroaching on public policy, in particular, preventing the circulation of counterfeit goods.”

The Presidium of the Supreme Arbitration Court of the Russian Federation, canceling the decisions lower courts, was more concise in his justifications. The resolution only states that under Art. 14.10 of the Code of Administrative Offenses of the Russian Federation, a fine may be imposed with confiscation of items containing an illegal reproduction of a trademark (i.e. fake goods). Moreover, the car did not contain any signs of illegal reproduction of trademarks.

Please note that the Presidium of the Supreme Arbitration Court of the Russian Federation literally interpreted only the concept of illegal use of a trademark given in Art. 14.10 Code of Administrative Offenses of the Russian Federation: illegal placement of someone else’s trademark on imported goods. The broader interpretation of such illegal use given in Art. 1484 of the Civil Code of the Russian Federation, the Supreme Arbitration Court of the Russian Federation did not accept and did not take into account. Such selective approach still causes controversy and criticism among lawyers and businessmen.

Supporters of maintaining the regime in Russia national exhaustion rights now require amendments to the Code of Administrative Offenses of the Russian Federation, pointing out shortcomings of the legislator that do not allow stopping parallel imports even at the stage of customs clearance of goods and bringing violators of the regime to administrative responsibility.

Supporters of replacing the national principle of exhaustion of rights with an international one, incl. such an influential agency as the FAS of Russia, having welcomed the decision of the Presidium of the Supreme Arbitration Court of the Russian Federation, urges not to be limited to half measures and points to the need to liberalize legislation in order to legalize parallel imports.

“Parallel gray” counterfeit

The Civil Code defines not only falsified goods as counterfeit. Any product legally marked with a trademark and released into civil circulation outside Russia can acquire counterfeit status if this product was imported into the territory of the Russian Federation not by the copyright holder himself, not on the basis of an agreement with him or without his special consent. Accordingly, actions to move such goods into the territory of the Russian Federation are illegal and violate the exclusive rights of the copyright holder. Even resellers who subsequently make civil transactions with such goods are violators.

These conclusions follow based on an analysis of the norms of the Civil Code of the Russian Federation and are confirmed by law enforcement practice.

Example 2

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Legal monopoly

An analysis of the decisions taken in the “UVEX” case discussed above and some other judicial acts shows that the purposes of importing goods are unimportant for the outcome of the case: for own needs importer (company/entrepreneur) or for further resale. The transfer of ownership of the goods to such an importer does not simultaneously entail the transfer or granting to the buyer of the rights to the results intellectual activity or on the means of individualization expressed in these things (products).

The legal monopoly of rights holders, thanks to the national principle of exhaustion of rights enshrined in legislation, leads to inequality among participants civil relations. The legislator, on the one hand, established economically unjustified and even absurd restrictions on the powers of owners, and on the other hand, presented rights holders with unjustified wide range rights, incl. on control of the Russian commodity market.

A legal monopolist (rights holder), receiving the right to establish the volume of imports, the range of imported goods and influence pricing processes in the Russian Federation, has complete freedom of action in establishing certain discriminatory conditions in relation to different countries and even different regions one state. Under the control of a foreign copyright holder ( individual or private company) sooner or later there may be all the channels through which goods marked with the trademark he owns enter a country that applies the national principle of exhaustion of rights. By agreeing or refusing the right to import, determining its conditions, as well as the conditions for introducing goods into circulation, rights holders can significantly influence competition. The legislative restrictions in force in the Russian Federation entail/may entail restrictions on competition in product markets, and the consequences of a complete ban on parallel imports will negatively affect competition and lead to monopolization commodity markets limited circle of people, which may, among other negative consequences, lead to an increase in prices.

Supporters of maintaining the current situation accuse “parallel” importers of receiving certain competitive advantages. For example, they point out that during parallel imports, false declarations are used entirely in order to understate the customs value of goods and the amount of customs duties and taxes, and as a result, such importers receive a price advantage. However, such an accusation against alternative importers is, to say the least, incorrect. How unfair are the statements that the so-called intermediaries are in all cases respectable payers of customs duties, taxes, etc.

The antimonopoly agency, which, in fact, monitors the state of competition in the country, does not share the prejudice about the presence of competitive advantages in persons importing and putting into civil circulation goods without special permission foreign copyright holders. On the contrary, the FAS Russia regards the rules stipulating that a product can be imported and put into civil circulation in Russia only with the consent of the copyright holder as limiting competition, and believes that the national principle of exhaustion operating in our country leads/can lead to a restriction of competition in the relevant areas. commodity markets.

Balancing the interests of copyright holders, parallel importers and consumers is not an easy task. Many foreign copyright holders spend money and time not only on promoting their products on Russian market and organization service, but also make efforts to create and maintain a certain business reputation. But even in this case, it is difficult to call the desire economically justified.

In any case, everything will be paid by the end consumer: both the royalties paid to the copyright holder for the right to import and release goods into circulation in the Russian Federation, and the resulting increase in the customs value of the goods, and therefore the duties and taxes of the importer. Importers face new problems when concluding agreements with the copyright holder. For example, an agreement with the copyright holder stipulates that license payments are calculated as a percentage of the cost of goods sold in Russia. In such cases, it is not always possible to determine the exact customs value imported goods.

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Footnotes

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Questions are asked by the head of the Corporate Online University, Alexander Myakota (A.M.)

Expert Mikhail Shavernev (M.Sh.) answers

A.M. Another similar story is observed, this is the export various equipment from Russia, perhaps produced by a foreign manufacturer. In particular, now it has become very profitable to sell our cars, which have already been produced by a foreign manufacturer, but are in circulation in the Customs Union, then the question of violation of the rights of the copyright holder arises - how to properly export this car so as not to violate anyone’s rights? What are the recommendations here? Not just a car, maybe some other product that has someone’s brand.

M.Sh. At the beginning of this year, at the end of the previous year, due to the fact that the exchange rate had changed very much and it was the export of cars and expensive brands from Russia that became profitable, many requests began to be received precisely on this issue - whether permission from the copyright holder is required for export. If we turn to the original source, I can immediately read: the procedure for the circulation of products bearing trademarks in the EAEU is regulated by Appendix 26 of the Eurasian Treaty economic union, and paragraph 16 enshrines the so-called principle of exhaustion for a trademark, which states that if a product was put into circulation with the consent of the copyright holder in the territory of the Eurasian Economic Union, then at the time of putting this product into circulation it trademark rights are exhausted. That is, if I have once introduced a product into the territory of the EAEU, I can no longer demand that the persons involved in its circulation respect my rights. That is, in fact, they act lawfully with my permission. This norm is enshrined in the Treaty of the Eurasian Economic Union, i.e. it is common to all countries Customs Union.

A.M. If I am exporting something that has been used, something that has undergone customs clearance once upon import into the Customs Union, then I do not need to ask the copyright holder when exporting.

M.Sh. If it is put into circulation by import, it is foreign goods, and it was imported into the Russian Federation and released with the consent of the copyright holder, then the rights to the trademark have been exhausted and it can be disposed of without restrictions. If the product is manufactured on the territory Russian Federation, for example, a car assembled in Kaliningrad, BMW, and so on, then the manufacturer, having manufactured and sold this model with this trademark, which is applied on the territory of the EAEU, he has exhausted his rights to the trademark, and you can take it and export it. Here another question arises: the customs authority, both during import and export, has the right to check whether this trademark has been put into circulation legally, and whether there are any violations when moving across the border. That is, if you are carrying a product that has a trademark, the customs authority always has the right to contact the owner of the product and ask him whether this product was put into circulation legally, illegally, whether there is a violation of the trademark, or whether there is no violation. Accordingly, for the time required for verification, the customs authority has the right to suspend the release of goods while it conducts correspondence, and you, accordingly, will wait to see whether your goods will be released or not. What will the customs authority find out? The customs authority will precisely clarify those points that are indicated in paragraph 16, which I focused on, and similar norms Civil Code Article 14.87. They will find out whether it was introduced legally. What documents will indicate that the product has been legally put into circulation? As a rule, the easiest way is to contact the copyright holder of this trademark, because he is the one who knows whether it was introduced legally or illegally. The answer received from the copyright holder will be regarded as the most informative, most complete and comprehensive.

A.M. Where to look for the copyright holder?

M.Sh. I came across the fact that they tried to look for the copyright holder in service centers, if we are talking about a car, in car dealerships, considering that since he sells it, he has something to do with it. In fact, trademarks in the Russian Federation are used to produce products for which trademark certificates have been issued. The register of these certificates is maintained by the Federal Service industrial property, fips.ru. There exists Information system. It's paid. If you have a trademark name, then you enter the appropriate field for the name of this trademark, and you are shown who the copyright holder is. You are shown a certificate that states who the copyright holder is. It is the person indicated in the trademark certificate who is authorized to give answers whether the product was produced legally or illegally. Therefore, if you intend to export goods from Russia that have a trademark, you need to contact either patent attorney, which works with these databases, or contact directly federal service industrial property, find information on the website, who is the copyright holder, what representatives he has, contact this representative with a request about whether this product is legally put into circulation. With the car this is clear, there are identification numbers. If the product does not have identification numbers, this is somewhat more difficult to do, but this is a matter of your interaction with the copyright holder. Having in hand a response from the copyright holder stating that the product has been put into circulation legally, you can, if you took care of this in advance as part of filling out the declaration, present it to the customs authorities in order to avoid inspection activities by customs. And feel completely calm, because it may turn out, let’s say, that the copyright holder allowed a certain factory to produce this product, but he allowed it to be produced in quantities of 100 pieces. And it was produced in quantities of 200 pieces. Accordingly, everything that is produced in real production in excess of the norm can be recognized as counterfeit products, simply for the reason that it was produced in excess of the quotas permitted by the copyright holder. This is theoretical. Therefore, in principle, in this case We understand that you can export legally manufactured products; you do not have to specifically have the permission of the copyright holder in your hands, but at the same time, the customs authority has the right to check and suspend the release of goods, and accordingly, it is advisable to contact the copyright holder in advance and not obtain from him permission for circulation, but proof that the product was put into circulation legally. Then you will feel even calmer.

A.M. Can they take advantage of obtaining information from the register of intellectual property objects or does not everything end up there?

M.Sh. They can and even must use the register of intellectual property objects. What is the most common pitfall? The declarant checks the information in TROIS, does not find his trademark there, and not finding it there, believes that no problems can arise simply because it is not in TROIS. It must be understood that TROIS contains a list of those goods for which the customs authority is obliged to conduct verification activities. And all those trademarks for which certificates have been issued, although they are not included in the TROIS, he has the right to use them, he is not obliged, but he has the right. If for goods included in the TROIS, the period of suspension of release is 10 days and verification activities are mandatory, then for goods that are not included in the TROIS, and for which there are certificates for trademarks, the period of suspension of release is 7 days. This doesn't make it much better. The matter turns into roulette - they will check you or not. The capabilities of customs authorities are not unlimited - time is short, there are many goods. However, things could end badly for you if they start checking your product. Control can be carried out after the release of the goods. It makes sense if you have a trademark, some kind of sticker, label, or your product imitates a trademark in shape, it is still advisable to contact FIPS as the primary source, or to a patent attorney, find information and contact directly the person indicated as right holder in the trademark certificate.

A.M. Such interest Ask. We were talking about exports just now. In principle, it is possible to export a product that has been put into circulation, because the right holder of the product has lost its rights. But to import goods put into circulation that were in circulation in another country. Here, customs requires permission from the copyright holder, even if the product has been in use for many years.

M.Sh. Having observed the practice over the years under Article 14.10, the problems associated with the movement of goods with a trademark can be divided into two points. If we are talking about Article 14.10, then at one time, as far as I remember, there was a big famous court case regarding a car, where a legally produced car was imported, but without the permission of the copyright holder. No one disputes that this is a legal car, imported completely legally. There was simply no permission. And the court then came to the conclusion several years ago that if the product was produced legally on its own with the permission of the manufacturer - the copyright holder, then 14.10 - the article for the illegal use of a trademark does not apply with confiscation, etc. But, if you are moving a product that has not previously been put into circulation on the territory of the EAEU, you are importing it, and you do not have the permission of the copyright holder, then the copyright holder has the right to approach you with a property claim within the framework of civil proceedings. Those. Customs does not take part here, and will recover from you damages associated with the fact that you import goods with a trademark without its permission. Customs cannot prohibit you from importing this product, provided that it is legally produced, but, nevertheless, you will have problems from a lawsuit from the copyright holder. Recently there have been several court decisions, where the copyright holders went to court and demanded to recover from the person who imported the parallel importer without permission, the so-called, to apply to him certain sanctions. At the same time, customs was involved as a third party, which was obliged to refuse to release the goods to the importer as an interim measure. These courts came to the conclusion that, at the request of the copyright holder to the parallel importer, he can demand from customs as interim measures refuse to release the goods to the person who imported the goods. At the same time, no case was brought under Article 14.10 for violation of trademark rights, because these are different things - movement counterfeit products, i.e. illegally manufactured, and parallel import - the movement of legally produced products without the permission of the copyright holder.

Moreover, it is necessary to note such an interesting point dedicated to Article 14.10. Very often, cases arise that goods are imported into Russia that are marked with a certain trademark, to which there is a copyright holder. It was placed there without the permission of the copyright holder, and when customs suspends the release of this product, seeing that it has a trademark but no permission, the importer goes to the copyright holder and asks him to give permission to import this product. The copyright holder, either for money or not seeing any problems with the import of this product, gives such permission. He gives this permission on the date after import, after declaring the goods by customs authorities. Such permits issued after import are considered by customs authorities as a document that does not affect the qualification of the offense under Article 14.10. The logic of the customs authority and the courts boils down to the fact that at the time of import of this product, the importer did not have permission to place this trademark, not only the importer, but also the manufacturer. And accordingly, if this product was produced without the permission of the copyright holder, even when it was imported and declared, then this constitutes an administrative offense under Article 14.10. This product is subject to confiscation and a fine is imposed on the importer. If such a situation occurs, you must understand that if you imported a product without the permission of the copyright holder and received it later, this in no way saves you from being brought to administrative responsibility.

Measures to protect rights to intellectual property are provided in accordance with Chapter 46 of the Customs Code of the Customs Union (hereinafter referred to as TMK), as well as Chapter 44 of the Law of the Republic of Belarus dated January 10, 2014 No. 129-Z “On customs regulation in the Republic of Belarus” (hereinafter referred to as Law on Customs Regulation).

The Law on Customs Regulation establishes exclusively requirements related to taking measures to protect rights to intellectual property and, therefore, are more relevant to copyright holders than to importers.

However, we note that in accordance with the provisions of the specified chapter of the Law on Customs Regulation, the Customs Register of Intellectual Property Objects (hereinafter referred to as TROIS, Register) is maintained, in which, as of September 25, 2014, 225 trademarks were included. The contents of the TROIS can be found on the website of the State Customs Committee of the Republic of Belarus (hereinafter referred to as the State Customs Committee) in the “For Businessmen” section (subsection “Protection of Intellectual Property Rights”). It is clear from the contents of the Register that in practice, customs protection measures are carried out specifically in relation to trademarks, and not other objects of intellectual property.

This circumstance determines the type of TROIS, which contains:

1. registration number of the intellectual property object according to the register;
2. name (description, image) of the intellectual property object;
3. name, number and date of the document confirming the existence and ownership of the right to the intellectual property object;
4. name of goods containing an object of intellectual property;
5. class of goods according to ICGS / codes of goods according to the Commodity Nomenclature of Foreign Economic Activity;
6. information about the copyright holder;
7. information about proxies(representatives) of the copyright holder;
8. the period until which the customs authorities will take measures to protect intellectual property rights (please note that the period specified in the TRIIS can be extended by the copyright holder an unlimited number of times);
9. note (as a rule, the note indicates the validity period of the copyright holder's liability insurance contract for causing property damage to the declarant, owner, recipient of goods containing intellectual property as a result of the suspension of the release of such goods).

Since TROIS is located in open access, in fact, any person has the opportunity to familiarize himself with its contents and learn enough detailed information information about which trademark is subject to customs protection measures, which goods marked with this trademark are protected, what is the deadline for implementing measures to protect intellectual property rights, who is contact person(representative) of the copyright holder.

It is necessary to take into account that TROIS is updated every two weeks, that is, every two weeks an updated version of TROIS is posted on the State Customs Committee website, which can include both new trademarks, and those trademarks, the period of customs protection can be excluded the rights to which have expired and have not been renewed.

Moreover, each member state of the Customs Union (that is, the Republic of Belarus, the Russian Federation and the Republic of Kazakhstan) has its own separate Register, united customs register intellectual property objects of the member states of the Customs Union, despite its mention in Chapter 46, TMK was never created. In this regard, again, the same goods may be subject to customs protection when imported through Belarus and not subject to import through Russia (meaning upon initial import into the customs territory of the Customs Union and placement under the appropriate customs procedures).

Thus, TROIS is maintained not only for the information of the copyright holders themselves, but can be very useful for importers of specific goods, who have the opportunity to familiarize themselves with the contents of the Register and, in advance of delivery, assess the risks of suspension of customs clearance.

Note that the risk group usually includes importers of household and computer equipment, alcoholic drinks, coffee, cigarettes, perfumes and cosmetics, as trademarks registered in relation to specified goods, prevail in TROIS.

We also note that customs protection measures are usually applicable in cases where the declarant-importer declares a release procedure for domestic consumption. That is, if any other procedure is applied, other than the customs procedure for release for domestic consumption, measures for customs protection of rights to a trademark “will not work” and the goods will be imported without hindrance. For example, the owner of a duty-free shop, when applying for a customs procedure for duty-free trade, imports goods marked with trademarks included in the TROIS without any obstacles.

At the same time, the right holder has identified specific authorized importers who also have the right to freely import goods subject to customs protection into the territory of the Republic of Belarus.

To obtain information about such authorized importers, any other importing company has the right to contact either representatives of the copyright holder or the copyright holder himself directly (for example, in regional office copyright holder company, if any). Thus, one of the options for purchasing goods without stopping them at the customs border of the Customs Union is to purchase directly from authorized importers, and not independently. In this case, there is no risk of encountering measures for customs protection of rights to intellectual property.

In addition, there is no risk in the case of placing goods under the customs procedure of customs transit due to direct instructions legislation (clause 2, clause 2, article 328 TMK - cases of non-application of customs protection measures).

At the same time, if the option of purchasing from authorized importers after importation into the territory of the Republic of Belarus seems inappropriate, independent deliveries are possible. In this case, the consequences of such a supply will depend on whether the importer acts in good faith or in bad faith, depending on which the consequences of such independent supplies will vary. If we're talking about about a bona fide participant foreign economic activity, which, for example, makes purchases from the official foreign distributor of the copyright holder (or directly from the copyright holder itself), that is, in the absence of other signs of counterfeit goods, significant problems with its registration at the customs border should not arise.

At the same time, it is necessary to take into account that any time when importing goods by an unauthorized importer with a statement of the customs procedure for release for domestic consumption, the release of such goods is suspended for a period of 10 (ten) working days, which means that the goods are sent to a temporary storage warehouse, which entails behind you additional expenses for the importer (and regardless of whether he is in good faith or not).

To resolve issues related to the suspension of goods marked with a trademark included in the TROIS, each copyright holder, as a rule, has developed an internal procedure for coordinating the supply of goods imported by persons other than authorized importers, provided that there are no other signs of counterfeit.

If customs clearance of goods is suspended at the customs clearance point where the goods arrived, mandatory a notice of suspension of customs clearance is drawn up and sent to the representative of the right holder (the person indicated in the corresponding column of the TRIIS). In this case, such notification is sent no later than 1 (one) working day following the day the decision was made to suspend the release of goods containing intellectual property (clause 2 of Article 331 of the TMK). Before sending such a notice to the representative of the copyright holder, the declarant (his representative) receives a copy of it. The notification also indicates the reasons and timing of the suspension of customs clearance of goods, provides information about the name (last name, first name, patronymic) and location (address) of the copyright holder and (or) the person representing his interests, as well as the name (last name, first name, patronymic ) and location (address) of the declarant.

A representative of the copyright holder can be contacted by this issue with the copyright holder himself (his authorized persons) to receive further instructions and notification of the situation that has arisen, and only subsequently issues an import permit and customs clearance goods. This procedure (in the absence of other signs of counterfeit) may take 1-2 business days. At the same time, by virtue of Part 2, Clause 1, Art. 331 TMK, at the request of the copyright holder or a person representing his interests, the suspension period may be extended by the customs authority for an additional 10 (ten) working days. Such an extension can be carried out if the copyright holder (his representative) has reasonable doubts regarding the authenticity of the imported goods (that is, the absence of signs of counterfeit).

Thus, if we are talking about a bona fide importer, then after the expiration of the suspension period for the release of goods containing intellectual property and in the absence of a reaction from the right holder, the release of such goods is resumed and carried out in the manner established by TmK (clause 3 of Article 331 of TmK ). In this case, the copyright holder is responsible for property damage(damage) caused to the declarant, owner, recipient of goods containing intellectual property as a result of the suspension of the release of goods in accordance with Chapter 46 of the TMK, unless a violation of the rights of the copyright holder is established (clause 5 of Article 331 of the TMK). In practice, to compensate for such damage, copyright holders enter into voluntary agreements insurance property liability, the insured amount for which must be equivalent to at least ten thousand (10,000) euros at the exchange rate National Bank of the Republic of Belarus, in relation to each object included in the TRIS.

Compensation for damage is carried out in accordance with Article 941 of the Civil Code of the Republic of Belarus (hereinafter referred to as the Civil Code), according to which entity who have insured their liability in order voluntary insurance in favor of the victim, bears liability within the limits of the above insured amount (provided that it is sufficient to cover the damage).

If the customs authority is presented with documents confirming the seizure of goods, their arrest or confiscation, or other documents in accordance with the legislation of the member states of the Customs Union, then the release of such goods is not carried out.

At the same time, the unscrupulous importer does not receive compensation for damage caused to him as a result of the suspension of customs clearance of goods.

The procedure for confiscating goods and applying other measures to them is regulated by national legislation, in particular Art. 29 of the Law of the Republic of Belarus dated 02/05/1993 No. 2181-XII “On Trademarks and Service Marks” (hereinafter referred to as the Law on Trademarks).

In accordance with paragraph 3 of Art. 3 of the Law on Trademarks, a violation of the rights of the owner of a trademark is recognized as unauthorized (that is, in the absence of permission from the owner of the trademark) production, use, import, offer for sale, sale and other introduction into civil circulation or storage for this purpose of a trademark or the product designated by this sign, or a designation confusingly similar to it, in relation to homogeneous goods. P. 1-1 tbsp. 29 of the Trademark Law in addition to paragraph 3 of Art. 3 gives the following definition of counterfeit goods: counterfeit goods are goods, labels, packaging of goods in relation to which (on which) a trademark or a designation confusingly similar to it is illegally applied.

That is, if a third party manufactures, for example, in China, goods on which it places a registered trademark or a designation confusingly similar to it (for example, replacing one letter or symbol in the name of a registered trademark), and such person does not have permission or the right to use it, then such a product is counterfeit.

Protection civil rights against illegal use of a trademark, in addition to demands to stop the violation and recover damages caused, can also be carried out by (Clause 2 of Article 29 of the Trademark Law):

1. removal from the product or its packaging of an illegally used trademark or a designation confusingly similar to it, and (or) destruction of manufactured images of a trademark or designation confusingly similar to it;
2. seizure or destruction of goods in respect of which the trademark was illegally applied;
3. imposing a fine in favor of injured party in the amount of the cost of the goods in respect of which the trademark was illegally applied.

According to Part 2, Clause 3 of the Resolution of the Plenum Supreme Court of the Republic of Belarus dated September 28, 2005 No. 9 “On some issues of application of legislation when considering civil cases related to the protection of the right to a trademark and service mark” (hereinafter referred to as Resolution No. 9) disputes regarding violation of the exclusive right to a trademark are subject to judicial review. At the same time, Part 1, Clause 10 of Resolution No. 9 stipulates that the protection of the exclusive right from illegal use of a trademark and service mark is carried out by the methods provided for in Art. 29 of the Trademark Law, as well as in the ways specified in Art. Art. 11, 989 Civil Code. Thus, the copyright holder can initiate legal proceedings if there is a violation of rights to a trademark registered in Belarus. Let us note that civil disputes arising from the application of legislation regulating property and personal non-property relations arising in connection with legal protection and the use of intellectual property are subject to the jurisdiction of the Supreme Court of the Republic of Belarus (or rather judicial panel for intellectual property cases of the Supreme Court of the Republic of Belarus).

However, it appears that the initiation trial– a rather long and expensive path, which is not so often chosen by copyright holders directly when a violation of rights is detected. As a rule, if, based on the content of the notification, as well as after taking samples (as provided in accordance with Article 333 of the Trademark Code), a violation of exclusive rights to a trademark is detected, the copyright holders contact authorized bodies with a statement about committing an administrative offense under Art. 9.21 of the Code of the Republic of Belarus on Administrative Offenses (hereinafter referred to as the Administrative Offenses Code), - illegal distribution or other illegal use of objects of industrial property rights (which includes, among other things, a trademark by virtue of paragraph 8 of Part 1 of Article 998 of the Civil Code). By virtue of the sanction of Art. 9.21 Code of Administrative Offenses this offense entails the imposition of a fine on an individual entrepreneur in the amount of up to one hundred (100) basic units with or without confiscation of the subject of the administrative offense, and on a legal entity in the amount of up to three hundred (300) basic units also with or without confiscation of the subject of the administrative offense confiscation.

By virtue of Part 1 of Art. 3.2 of the Procedural and Executive Code of the Republic of Belarus on Administrative Offenses (hereinafter referred to as PIKoAP) cases of administrative offenses under Art. 9.21 of the Code of Administrative Offences, are subject to consideration in court (by a single judge of the district (city) court). Protocols on administrative offenses provided for in Art. 9.21 of the Code of Administrative Offences, have the right to be drawn up by authorized employees of internal affairs bodies, bodies of the Principal state control, customs authorities, State Institution " National Center intellectual property" (clause 1, clause 16, clause 21, clause 48, part 1, article 3.30 of the Penal Code of Administrative Offenses, respectively).

At the same time, by virtue of Part 1 of Art. 10.1 PIKoAP preparation of a case of an administrative offense for consideration must be carried out no later than ten days from the date of the start of the administrative process. The start date of the administrative process is the date of drawing up the protocol on the commission of an administrative offense. A protocol on an administrative offense is drawn up by an official of the body leading administrative process(that is, in the situation under consideration - an official of one of the above bodies).

Consequently, if, when moving goods marked with a trademark registered and included in the TROIS across the customs border, signs of a violation of the rights of the trademark owner are observed, the trademark owner, as a rule, applies to the authorities authorized to draw up a protocol on the administrative violation, provided for in Art. 9.21 Code of Administrative Offences. In this case, the case will be considered in the district (city) court and the result of its consideration may be the imposition of a fine on the legal entity - the importer in the amount of up to 300 basic units (45,000,000 Belarusian rubles).

Thus, we believe that possible Negative consequences The importation of goods without the consent of the trademark owner can be prevented if one consults in advance the information provided in the TROIS, first of all, to find out whether a specific trademark is included in it or not (and, accordingly, whether it is subject to customs protection). Importers should also be attentive to their counterparties and make purchases from official distributors of the manufacturing company (trademark owner).

At the same time, even in case of purchase from an official distributor in the absence of permission from the copyright holder (his representative) for the import of goods marked with a trademark included in the TROIS, customs clearance may be suspended for up to 10 working days, which entails additional costs for the importer.

We believe that a solution to this problem could be to contact the copyright holder in advance with notification of what goods will be imported and in what quantities.

If the importer imports goods on which the trademark was applied in violation of the rights of the owner of such a trademark, then it is possible to impose administrative penalty with confiscation of imported goods. In addition, after the imposition of such a penalty, the copyright holder may also demand compensation for losses caused by unauthorized import (as well as use other methods of protection) by initiating judicial trial(for compensation for losses caused as a result of harm to the copyright holder in accordance with Article 933 of the Civil Code).

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Permission of the copyright holder

What should be written in the license or permission of the copyright holder to use the material?

According to the norms of the Civil Code of the Russian Federation, the permission of the copyright holder to use works of science, literature and art can be formalized in the form of a license agreement, including open license. The use of works of science, literature and art does not imply any reciprocity property provision by the person using them. The permission of the copyright holder implies repeated use of the work specified in it.

Tell me what punishment awaits someone who forged or used a trademark or company logo without the permission of the copyright holder. And also, if the company is located in the USA, how does this punishment apply in the Russian Federation?

Hello. 1. The reasons for initiating a criminal case are: 1) a statement of a crime; 2) surrender; 3) a message about a crime committed or being prepared, received from other sources; 4) the prosecutor’s decision to send relevant materials to the authority preliminary investigation to resolve the issue of criminal prosecution. 1.1. Lost power. 1.2. The reason for initiating a criminal case for crimes provided for in Article 172.1 of the Criminal Code of the Russian Federation is only those materials that are sent Central Bank Russian Federation in accordance with Federal law dated July 10, 2002 N 86-FZ "On Central Bank Russian Federation (Bank of Russia)", as well as the bankruptcy trustee (liquidator) financial organization to decide whether to initiate a criminal case. 2. The basis for initiating a criminal case is the presence of sufficient data indicating the signs of a crime. Based on composition and duration.

Is it true that you can make parodies of foreign songs without the permission of the copyright holder, but not of Russian ones?

Hello. Yes, this is not a violation

If I take picture A from the catalog of images on the copyright holder’s website (low resolution and quality) and use it to create image B, which is 90-98% similar, but with a higher resolution ( good quality). In other words, the picture will be rendered anew, but in high quality.
Questions:
1). Will I violate copyright rights if I post picture B on my website for commercial purposes?
2). If I present documents about purchasing image B or ordering an image with the parameters of image A, not from the author of image A, but from a free artist, will this relieve me of responsibility?

Parallel import

Despite the fact that we previously published this material on Habrahabr, we are posting it here too.

It is immediately worth noting that there is no legal definition of “parallel import”. Meanwhile, based on the current international practice, parallel imports usually mean the import of “branded” products into the territory of the country where this product is not implemented by the brand copyright holder himself or by another person with the consent of the copyright holder.

Now we can dwell in more detail on the distinctive features of parallel imports.

Firstly, an importer is understood as any person who imports original products, and not entities authorized by the copyright holder of the brand (official distributors, dealers, etc.).

Secondly, imported products have distinctive (unique) markings.

Thirdly, there is no permission from the trademark copyright holder to import products (introduction into circulation), that is, the importer and the copyright holder are not in a contractual relationship.

Let's consider a classic scheme with the participation of a Russian entrepreneur.

A Russian entrepreneur travels abroad, where he purchases a batch of original goods for further implementation on the Russian market. An entrepreneur is driven by a natural desire to save money, as well as to find the most advantageous offer and acceptable terms of cooperation.

After all, purchasing goods at an inflated price from an official distributor is much less profitable than paying more low price manufacturer, established, for example, for third countries.

It turns out that the entrepreneur does not use the official channel (acting through official distributors in the country where they are located), but a “parallel” one. Hence the name of the entire mechanism - “parallel import” or “gray import”. However, in this part, let’s assume that the reader of this material has received confirmation of the information he already has.

To answer this question, it is worth starting by revealing the main category used in the issue under consideration, namely the principle of exhaustion of rights.

The essence this principle boils down to the following.If the copyright holder has sold (introduced into civil circulation) his products, then he loses the right to subsequently dictate to the new owners of the products the terms of their sale, to make demands arising from a violation of trademark rights (for example, to pay compensation), and to prevent further resale of goods.

The consolidation of this principle is due to the desire to ensure equality between the interests of the copyright holder and the interests of the state (society).

There are three types of the principle of exhaustion of rights (hereinafter also referred to as PIP): national, international and regional.

The national principle provides for the exhaustion of the exclusive rights of the copyright holder only if the product is put into circulation within the country. Despite the repeated sale of goods abroad, the consent of the trademark owner is required to import goods into a country with a valid national PIP. Or in other words, the introduction of a product into circulation in the country of production of the product means the exhaustion of exclusive rights to a trademark only in this country, and not automatically in all other countries of the world.

The international principle presupposes the exhaustion of the exclusive right to a trademark in relation to products that have been put into circulation, both in the country of production of the goods and in any other country in the world.

The regional principle differs from the international principle on the basis of territoriality; the sale of “branded” products in the territory of one of the regions entails the exhaustion of the exclusive right to the brand in other regions.

In the Russian Federation there is a national principle of exhaustion of exclusive rights, in the EU it is regional, and, for example, in China it is international.

In Russian legislation, the national PIP is enshrined directly in Art. 1487 of the Civil Code of the Russian Federation, which provides for the exhaustion of the exclusive right to a trademark in relation to those goods that were put into circulation on the territory of the Russian Federation directly by the copyright holder or with his consent.

It turns out that the consent of the brand's copyright holder must be obtained to import goods with original labeling into the Russian Federation.

According to the current Russian legislation any use of a trademark without the consent of the copyright holder is illegal (Article 1484 of the Civil Code of the Russian Federation). IN the said article only sample list possible ways use of a trademark.

Import of products marked with a trademark is independent form use of a trademark.

Importing original products without the consent of the brand's copyright holder is an illegal use of the copyright holder's brand, for which civil liability is provided.

The right holder of a trademark has the right to use the methods of protection that are provided for general norm- art. 1252 of the Civil Code of the Russian Federation (requirement for recognition of rights, prohibition of use, etc.), as well as special - Art. 1515 of the Civil Code of the Russian Federation (demand for payment of losses or compensation).

The above rights also apply to foreign trademark holders whose rights were violated as a result of the parallel import of their products into Russia. Most often, copyright holders affected by parallel imports make demands on the importer to prohibit the introduction of labeled products into circulation, including a ban on import, sale, offer for sale, as well as a requirement to pay compensation. The amount of compensation collected usually varies from 1 million rubles. up to 5 million rubles True, courts usually award only half of the declared amounts of compensation.

Thus, the court satisfied the demands of the companies-rightholders of the trademarks “LONGINES”, “OMEGA”, “RADO” to recover compensation from the defendants for offering for sale in the Russian Federation original watches, although in a smaller amount than the declared amount - 2.5 million rubles each. in favor of each of the plaintiffs. At the same time, the court did not accept the argument of one of the defendants about the impossibility of distributing territorial principle exhaustion of rights to the Internet ( Determination of the Supreme Arbitration Court of the Russian Federation on the refusal to transfer the case to the Presidium of the Supreme Arbitration Court of the Russian Federation dated July 15, 2014. No. VAS-12583/13).

IN judicial practice You can also find record low amounts of compensation that the trademark owner presents to the importer. For example, in one of the cases, the copyright holder of a trademark on medical equipment demanded that the importer pay compensation in the amount of 20 thousand rubles. ( The Court's ruling on intellectual rights dated June 19, 2014 in case No. A76-17672/2013).

But the copyright holder of the KRUSOVICE brand was unlucky; the court reduced the amount of compensation from 1 million rubles. (10 thousand rubles for each violation - 100 bottles with original markings were imported) up to 30 thousand rubles. ( Resolution of the Moscow District AS dated February 25, 2013. in case No. A40-23850/12-27-216).

Can the copyright holder demand that the importer withdraw from circulation the goods imported by him? original goods and destroy.

These demands, namely, withdrawal from circulation and destruction at the expense of the violator, can be stated by the trademark owner only in relation to counterfeit goods. According to current norm(Article 1515 of the Civil Code of the Russian Federation), counterfeit goods mean goods on which a trademark or a confusingly similar designation is illegally placed. In other words, a counterfeit is always a fake.

For example, in wide famous case with the participation of the copyright holder of the Porsche Cayenne S brand, the court found no grounds for recognizing the imported cars as counterfeit. After all, the cars had original markings, which were applied by the copyright holder themselves. ( Resolution of the Supreme Arbitration Court of the Russian Federation dated February 3, 2009 in case No. A40-9281/08-145-128).

An item of parallel import is not a counterfeit product due to the fact that it was produced and labeled without violating the exclusive rights of third parties. This means that copyright holders cannot punish importers using civil penalties provided for the sale of counterfeit goods. Yes, manufacturer motor oils"MAGNATEC" and "EDGE" filed a lawsuit against the company "CASTROL LIMITED", in particular, with demands for the seizure and destruction of illegally imported products, calling them counterfeit. Meanwhile, the court refused to satisfy the requirements for the reasons stated above ( Resolution of the Intellectual Rights Court dated October 24, 2013 in case No. A53-33004/2012).

Parallel imports were not always outside the civil law field. Thus, three years ago, the courts were more loyal to violators than to indignant brand rights holders. The number of denials of claims significantly exceeded the number of judicial decisions issued in favor of copyright holders. The judges' reasoning boiled down to the following: since the copyright holder of the brand introduced the goods into circulation abroad, it means that his exclusive rights have been exhausted, which means that his demands are inappropriate. Thus, the courts, for some reason, adhered to international principle exhaustion of exclusive rights when actually secured in Russia national principle. It is not surprising that the majority similar decisions were overturned by higher courts.

Parallel import and administrative responsibility

Of course, for parallel imports, violators are subject to some civil liability sanctions, but what about administrative penalties?

Administrative liability is provided for the illegal use of a trademark (Article 14.10 of the Administrative Code). From arbitration practice, in particular, from the Resolution of the Plenum of the Supreme Arbitration Court of the Russian Federation dated February 17, 2011 No. 11, it is clearly seen that the sanctions of Art. 14.10 of the Code of Administrative Offenses apply only to persons engaged in the production and sale of counterfeit goods. Thus, entrepreneurs practicing parallel imports can easily exhale; administrative liability for the illegal import of unique goods does not promise them.

It was described above what legal levers can be used by copyright holders whose rights have been violated as a result of parallel imports. What counterarguments do violators most often use?

Let's list some of them.

The offender’s argument that he is importing goods not for commercial sale, gives the impression of mere baby talk and is immediately rejected by the courts as unfounded.

The key argument in the defendant’s position is his argument that the actions of the copyright holder are aimed at limiting competition and are nothing more than an abuse of right. In fact, the above arguments also reflect the position of the FAS, which actively advocates the legalization of the type of import in question in Russia. The positive effect of this would be expressed in stimulating competition, expanding channels for the supply of goods, as well as satisfying the interests of the end consumer.

Naturally, all of the above does not at all meet the interests of international companies that want to have a monopoly on their products and calmly dictate the terms of their sale to distributors.