Register of intellectual rights. Features of declaring goods with IP objects

One of the tools customs control to protect the interests of copyright holders is the Register of Intellectual Property Objects, which is maintained by the customs service on the basis of applications from holders of exclusive intellectual property rights. To date, almost 1,900 trademarks belonging to both Russian and foreign manufacturers are registered in the customs register. According to statistics from the Federal Customs Service of Russia, greatest number Counterfeits are detected in clothing and footwear, followed by confectionery and food products in second place, and perfumes and cosmetics in third place. Next come CDs and DVDs, leather goods, household appliances and pharmaceutical products. The objects of violation of the rights of trademark owners are mainly such well-known companies as Adidas, Reebok, Puma, Nike and others.

To ensure the protection of rights to objects intellectual property when trading goods across the border of Russia, and provides for the possibility of including information about such objects in the customs register of intellectual property objects, which is maintained by the Federal Customs Service of the Russian Federation. Information about trademarks, names of places of origin of goods, objects can be entered into the customs register copyright And related rights.

The inclusion, in particular, of trademarks in the customs register of intellectual property provides the opportunity to stop the illegal import of counterfeit goods across the customs border of Russia. According to Art. 14.10 of the Code of Administrative Offenses, the illegal use of someone else’s trademark, service mark, name of place of origin of goods or similar designations for homogeneous goods - entails the imposition of an administrative fine on citizens in the amount of one thousand five hundred to two thousand rubles with confiscation of items containing an illegal reproduction of the trademark; on officials- from ten thousand to twenty thousand rubles with confiscation of items containing illegal reproduction of a trademark; for legal entities - from thirty thousand to forty thousand rubles with confiscation of items containing illegal reproduction of a trademark. Thus, an appeal by the customs authority to the court with a statement of an administrative offense may entail the imposition of a fine and confiscation of the entire consignment of imported goods.

The procedure for entering intellectual property objects is currently regulated by Chapter 42 of the Federal Law “On customs regulation in Russian Federation» No. 311-FZ of November 27, 2010, hereinafter referred to as the Federal Law, Chapter 46 of the Customs Code of the Customs Union, as well as the Administrative Regulations of the Federal Customs Service for the performance of the state function of considering applications for customs authorities to take measures related to the suspension of the release of goods, and for maintaining customs register of intellectual property objects

Based on applications from copyright holders, intellectual property objects are included by customs authorities in the customs register of intellectual property objects, which is maintained by the customs authority of a member state of the customs union in the manner and under the conditions established by the legislation of the member states of the customs union.

The customs authority includes in the customs register of intellectual property objects, which is maintained by the customs authority of a member state of the customs union, objects of intellectual property that are subject to protection on the territory of a member state of the customs union, in accordance with the legislation of that state.

The conditions for including intellectual property objects in the unified customs register of intellectual property objects of the member states of the customs union and the procedure for its maintenance are determined by an international treaty of the member states of the customs union.

The customs register of intellectual property objects (hereinafter referred to as the register) includes objects of copyright, objects of related rights, trademarks, service marks and names of places of origin of goods in respect of which the federal executive body authorized in the field of customs affairs has decided to take measures related to the suspension of the release of goods. There is no fee for inclusion in the register. The register is maintained federal body executive power, authorized in the field of customs, in the manner established by this body.

Objects of intellectual property in respect of which the federal body executive power authorized in the field of customs affairs, a decision was made to take measures related to the suspension of the release of goods included in the register, provided that the copyright holder ensures the fulfillment of the obligation specified in Part 5 of Article 306 of Federal Law N 311-FZ "On Customs Regulation in the Russian Federation" , by methods provided for by the civil legislation of the Russian Federation. The copyright holder has the right, instead of ensuring the fulfillment of the obligation, to submit an insurance contract for the risk of liability for causing harm in favor of the persons specified in Part 5 of Article 306 of Federal Law N 311-FZ “On Customs Regulation in the Russian Federation”. In this case, the amount of security for the obligation or the insurance amount must be at least 300,000 rubles.

If the right holder fails to provide a document confirming the security of the obligation, or an insurance contract for the risk of liability for causing harm within one month from the date of sending the notification of the decision made to take measures related to the suspension of the release of goods, the federal executive body authorized in the field of customs affairs shall take decision to refuse to include an intellectual property item in the register.

An intellectual property object is subject to exclusion from the register in the following cases:

1) at the request of the copyright holder;

2) if the copyright holder fails to comply with the conditions provided for in Part 2 of Art. 306 Federal Law N 311-FZ "On customs regulation in the Russian Federation";

3) upon termination legal protection an object of intellectual property in the prescribed manner;

4) if the right holder, during the period of suspension of the release of goods, did not apply to the body authorized in accordance with the legislation of the Russian Federation for the protection of his rights or did not apply to the customs authority with an application to cancel the decision to suspend the release of goods;

5) upon detection false information submitted when submitting an application for inclusion of an intellectual property object in the register.

Changes may be made to the register based on information received:

1) from the copyright holder (his representative) about changes in the information specified in the application for inclusion of an intellectual property object in the register or in the documents attached to it;

2) from law enforcement or other government agencies, as well as from individuals or legal entities that the persons indicated in the register as the copyright holder are deprived of rights or have limited rights to the intellectual property object.

Changes to the register are made on the basis of a decision of the federal executive body authorized in the field of customs affairs.

Changes to the register may be preceded by verification of the received information on the basis of a decision of the federal executive body authorized in the field of customs affairs, of which the copyright holder and customs authorities are notified no later than one working day after the relevant decision is made. During the inspection period, customs authorities do not take measures related to the suspension of the release of goods containing such an object of intellectual property.

The period for which an object of intellectual property is included in the register may be suspended for the time necessary for verification, but not more than for two months.

The federal executive body authorized in the field of customs affairs ensures the publication of register data in its official publications and their placement on its official website on the Internet in the manner established by it.

Customs authorities have the right to suspend the release of goods containing intellectual property objects not included in the register if signs of violation of intellectual property rights are detected and if there is information about the copyright holder (his representative) on the territory of the Russian Federation. Customs has the right to request from the copyright holder the information necessary to exercise the powers provided for in Article 307 of Federal Law No. 311-FZ “On Customs Regulation in the Russian Federation.” If the release of goods is suspended, the customs authorities no later than next day after the day of suspension of the release of goods, the copyright holder and the declarant are informed about this.

The release of goods is suspended for seven working days. The customs authority has the right to extend specified period, but no more than 10 working days if the copyright holder sent an application to the customs authority writing about such an extension and submitted to the federal executive body authorized in the field of customs affairs an application for inclusion of the corresponding intellectual property object in the register in accordance with Article 306 of this Federal Law.

The copyright holder has the right to receive from the customs authority information about goods in respect of which a decision was made to suspend release in accordance with Art. 307 Federal Law N 311-FZ “On customs regulation in the Russian Federation”, as well as take samples and specimens of such goods.

The decision to suspend the release of goods is subject to cancellation before the expiration of the period for suspending the release of goods, if the information available to the customs authority about the copyright holder has not been confirmed or the copyright holder (his representative) has applied to the customs authority with a request to cancel such a decision, as well as in the case provided for in Article 310 of the Federal Law N 311-FZ "On customs regulation in the Russian Federation". If, before the expiration of the period for suspending the release of goods, the copyright holder has not fulfilled the conditions provided for in Part 2 of Art. 310, or authorized body no decision has been made to seize goods, to seize them or to confiscate them, the release of goods is carried out in the manner established by customs legislation Customs Union and Federal Law No. 311-FZ "On customs regulation in the Russian Federation".

The measures provided for in Art. 310 do not apply to goods containing intellectual property, for which measures were previously taken in accordance with Art. 310 Federal Law N 311-FZ "On customs regulation in the Russian Federation".

It should be noted that regulations have not yet been adopted regulating the conditions and procedure for including intellectual property objects in the unified customs register of intellectual property objects of the member states of the Customs Union and the procedure for its maintenance.

Additional guarantee of protection for owners exclusive right for a trademark is to enter information about the trademark into the Register of Intellectual Property Objects, which is maintained by the customs service on the basis of applications from the holders of exclusive rights to intellectual property.

To date, almost 1,300 trademarks belonging to both Russian and foreign manufacturers are registered in the customs register.

Objects of intellectual property subject to inclusion in the customs register

The purpose of entering intellectual property into the customs register

The inclusion of trademarks, objects of copyright and related rights in the customs register of intellectual property objects provides the opportunity to stop the illegal import of counterfeit goods across the customs border of Russia, that is, it is additional way protection of the exclusive right of the copyright holder.

Necessary information for entering into the customs register of intellectual property objects

To compile a set of documents, it is necessary to provide following information for trademarks (service marks):

• names (indications or images) of trademarks (service marks);
• description of trademarks (service marks);
• list of goods and services indicating their classes in accordance with International classification goods and services (ICGS) in respect of which a trademark or service mark is registered;
• information about documents confirming the registration of trademarks (service marks) in accordance with the legislation of the Russian Federation and international treaties Russian Federation;
• information about assignment agreements in the event that exclusive rights were acquired under an agreement on the assignment of a trademark;
• information about license (sublicense) agreements and licensees (information about documents confirming the introduction of goods designated by trademarks into civil turnover on the territory of the Russian Federation directly by the copyright holder or with his consent.

In addition to the above, information about the applicant (copyright holder):
For Russian legal entity are indicated:

• location;
• mailing address;
• telephone, fax, telex number, address Email and other data necessary for customs authorities to notify the suspension of the release of goods;
• information about state registration;
• information about registration in tax authority as a taxpayer and identification number taxpayer (TIN).

For Russian individual, including passport details and TIN (if available).

Additional information for entering a trademark into the customs register

In addition, the applicant may submit any additional information, which, in his opinion, may be useful to customs authorities to identify goods that have signs of counterfeit goods, as well as to enter a list of manufacturers and sellers (importers/exporters) of legal products into the customs register.

Deadlines for entering a trademark into the customs register

A trademark is entered into the customs register in month period from the moment of receipt by the Federal Customs Service, however, if it is necessary to provide additional information and/or documents, this period can be extended to two months.

The cost of entering an intellectual property object into the customs register

There is no state duty.
The cost of services for drawing up, submitting and receiving documents for entering a trademark into the customs register is from 15,000 rubles.

IN this register objects include organizations of copyright, related ones, having a trademark and with a service mark of objects.

If the company actively uses its trademark, is an importer, working on license agreement or official distributor trademark, he is recommended to register his brand in the customs register of the Federal Customs Service. This method convenient when fighting competition or counterfeit products.

The right to protect a trademark extends within the country where the registration certificate was obtained. International security used in some countries, including European ones.

Copyright holder controls use of your own trademark:

• on labels, packaging and the goods themselves, introduced into civil circulation or stored for this purpose;
• for the provision of services if the company has the appropriate sign;
• for document flow;
• in advertising;
• in the Internet.

The copyright holder cannot control the following types of trademark use:

• not for advertising purposes;
• when used on goods that have already been introduced into civil circulation;
• for personal purposes;
• for another type of application.

By type, trademarks are:

• verbal – the font combination is protected (STS, “Canon”, “Shebekinsky”);
• pictorial - consist of a specific, recognizable image;
• combined - these are logos;
• three-dimensional;
• protected in a specific color scheme;
• With special status etc.

Collective and well-known trademarks have a special status. On collective signs have the right of group or association organization for the purpose of distinguishing own goods from products sold by other organizations. A company that has a collective mark has the right to use its own. As with enterprise trademarks, collective and certified ones are subject to protection in various countries peace.

Wide famous signs among consumers Russian market called well known. They are recognized as such by the relevant executive authorities and are protected indefinitely. Since there is no clear definition of this type there is no sign; factors of fame and reputation of the enterprise are taken into account. The mark can be determined based on opinion poll data on the recommendation of Rospatent.

The owner of the mark enters into TRIIS a list of importers and exporters. The sign approves a mechanism for protecting property, preventing illegal import under a well-known brand, identifying violators and documenting counterfeit shipments. Violators are quickly brought to justice and receive compensation in court.

To be included in the register, the company sends an application and a package of documentation to the Federal Customs Service of Russia. If the submitted documents are drawn up in foreign language, they are translated into Russian. Copies and translations are certified by a notary. The application is submitted in accordance with established order. This document specifies the deadline for inclusion in the register.

The inclusion of trademarks in TROIS has some nuances. According to the regulations Customs Service the inclusion sign is 60 days, but in practice this period doubles. Objects are entered into the register for a period 24 months, and then it is extended upon application, and this procedure can be performed an unlimited number of times.

To exclude the fact that the inclusion of a mark in the register is interrupted, it is recommended to submit an application at least 2 months before the expiration of the deadline. When a sign is included in the TROIS, no state duty is paid.

Documentation

To enter a mark into the TROIS, there is no specific package of documents, as well as a list of objective evidence of the need for inclusion in the register. The agency may request additional package documentation and explanation of the company’s position. In the absence of motivating evidence, grounds for refusal arise.

To include a trademark in the register, the copyright holder submits a corresponding application to the Federal Customs Service and documents reflecting the information:

• about the company-right holder;
• that the organization is this moment conducts activities;
• on confirmation of the exclusive right to a mark (certificates from FIPS, WIPO, documents confirming the fact of alienation of the mark, issuance of a license or registration for it);
• about representatives authorized on behalf of the company to interact with Russian customs;
• about counterfeit goods, violators and customs posts where the violation took place;
• insurance contract property liability, which indicates an amount of 300,000 rubles or more.

The Federal Customs Service introduces signs free of charge based on an application. The preparation and execution of the application depends on:

• fact of inclusion in the register;
• speed of entry into TRIIS (if requested additional documents or clarification, the period may be extended to 6 months);
• detection efficiency counterfeit products Federal Customs Service in the future.

If the application is submitted by a representative of the copyright holder, a power of attorney is required. It must operate on the territory of the Customs Union. The statement is complemented by a risk profile that increases the likelihood of identifying counterfeit goods. When drawing up an application, attach a list of documents and their number of pages.

Copies included in the package of documents must be of high quality with clearly visible seal impressions. The entire package is placed in a hard folder, on which the text “protection of intellectual property” should be clearly visible. Upon completion of the review procedure, the owner receives certificate of entry of the mark into the register.

Positive aspects of adding a mark to TROIS:

• strengthening the product’s market position;
• defence from illegal competition based on sales of counterfeit products;
• eliminating sudden losses in profits.

For the copyright holder, this is the most effective way protection from the activities of violators and their identification.

The next advantage is that the mark is entered into the register for a period of 24 months, and then extended upon repeated application.

During this period, tracking is monitored according to all information in the regions counterfeit goods. If the violator does not have permission, the entire batch is confiscated, and the services impose a fine in the amount of 30,000 to 100,000 rubles. The confiscated batch is in most cases destroyed.

What happens after inclusion in TROIS:

• copyright holder or his authorised representative regularly in in writing issues a permit or ban on the import of goods, which is mandatory for the declarant or customs post;
• an administrative fine is imposed on counterfeit goods;
• gets excited administrative responsibility based on Article 14.10 of the Code of Administrative Offences;
• the copyright holder receives the right to file a claim for compensation or destruction of counterfeit products;
• persons who imported goods produced and labeled by the copyright holder are not held accountable;
• imported original product without the permission of the copyright holder, it is considered counterfeit by the Customs Service;
• all disputes related to the work of the Customs Service in relation to the inclusion of a mark in the register are automatically considered actions to protect intellectual property rights and are subject to consideration by the appropriate court.

Timing and cost

When submitting an application to include a mark in the register, the owner thinks about the cost and timing of the procedure. It is included in the register for a period up to two years, the certificate is issued for 10 years. Both periods are extended based on the owner's application. By Administrative regulations the application should not be considered for more than a month.

Some companies need time to promote a new trademark. Until the moment he becomes recognizable, he is vulnerable. To quickly give trademark fame requires significant capital investments, therefore its inclusion in the register is required; inclusion itself does not require payment.

If the owner of a mark doubts that he will be able to independently work with the Customs Service to include the developed mark or logo in the TRIIS, he can contact the companies involved in this. But these organizations will charge a considerable amount for conducting the entire process.

Grounds for refusal

When considering an application, customs authorities often require a risk insurance agreement and documents confirming the right to be included in the register. If the copyright holder does not provide documents for any reason, the federal body is authorized to refuse to include the object in the register.

Also, an object may be excluded from TRIIS if:

• filing a corresponding application from the copyright holder;
• failure to comply with the conditions established by legislative level;
• termination of the term of legal protection of the mark in accordance with the established procedure;
• identifying inaccurate information provided when sending the application.

Work in practice

In addition to refusal to be included in the register or exclusion from it, the copyright holder also faces difficulties when completing registration.

Also not included in the register patent rights, which causes their owners to face additional difficulties. It is a table with names, descriptions and images of the object, dates, numbers, names of goods, their classification according to the Commodity Nomenclature of Foreign Economic Activity of the Customs Union or ICGS, information about the copyright holder or proxies. Information about objects is published on the official website of the Federal Customs Service www.customs.ru.

Learn more about the customs register in this video.