This Guide describes the Customs Application procedure, summarises the action that can be taken in relation to goods detained by Customs, provides guidance on working with Customs and how we can assist.
In Russia, as elsewhere, Customs monitoring has proved to be a valuable weapon against IP infringement. When an IP right has been recorded, Customs is obliged to detain any shipments of apparently infringing goods, and inform the registrant. This gives the IP owner the opportunity to take action before the goods have entered the market. Customs monitoring also has the effect of making potential infringers aware that the IP owner is actively protecting its rights and serves as a source of information for other law-enforcement authorities.
The Customs Register of Intellectual Property Objects (Customs IP Register) is a database of recorded IP, managed by a special department of the Federal Customs Service (FCS). It contains key information including details of the trade mark concerned, the goods in relation to which it is registered, the relevant Customs tariff code (TNVED code), authorised importers, and contact details of the IP owner’s representatives in Russia.
This Guide describes the Customs Application procedure, summarises the action that can be taken in relation to goods detained by Customs, provides guidance on working with Customs and how we can assist.
Customs Application Procedure
The table below indicates the documents that must be filed in support of a Customs Application in Russia. All documents in a foreign language must be notarised and certified by Apostille. We then arrange for them to be translated into Russian and further notarised in Russia.
What differentiates Russia from many countries is that Customs will detain parallel imports. For this reason it is vital to provide full details of all authorised importers. Customs will detain shipments of goods bearing the trade marks covered by the Application that are being consigned to anyone NOT listed as an authorised importer.
Customs is very strict and will return applications that do not comply with the requirements set out below. We, therefore, recommend that scanned copies of all documents be forwarded to us for review before notarisation to ensure that they are compliant.
| 1. General documents |
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| Document | Formalities/Notes | |
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Power of Attorney (PoA) |
Must be signed by a person who is shown, in an extract from the companies register (see below) or other corporate document, to be authorised to sign, or a person who has a PoA from the company specifically empowering him/her to execute PoAs.
The PoA must contain the signatory’s name and position in English and Russian before it is signed. Any discrepancies will render the PoA void. The PoA must include a full list of delegated rights. Not delegating certain rights in the initial PoA will mean that new PoAs (notarised and apostilled) will be required for further action. |
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Copies of Trade Mark Certificates (and any relevant licences) |
Trade mark registration certificates, and any additional certificates issued by the Russian Patent and Trade Mark Office (Rospatent) showing renewals, amendments to name or address or assignments, together with copies of all licence (or assignment) agreements in the country concerned. For national (Russian) trade mark registrations the Russian PTO (Rospatent) provides additional separate certificates for any change or recordal of licence/assignment. For national trade marks, scanned copies are sufficient. For international (Madrid) trade mark certificates (and all related licences and assignments), notarised and apostilled copies are required. |
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Extracts from Trade Mark Register |
For national trade marks – extracts are no longer required as of February 2012. For international registrations – a notarised and apostilled copy of the official extract from WIPO is required, along with a notarised translation prepared locally in Russia. The name and address of the trade mark owner must match that of the applicant for recordal. The extracts must not be older than one month at the time of filing the Customs application. It is usually best to arrange these documents last, after everything else is in place. |
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Company Incorporation Documents |
A certificate of incorporation (or extracts from the companies register for EU-based companies) and all subsequent certificates showing changes of name and/or address. These documents must be notarised and apostilled (a notarised translation must be prepared locally in Russia). These documents must not be more than one month old at time of filing. It is usually best to arrange these documents last, after everything else is in place.
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Insurance |
Insurance agreement – approximately 45 USD per trade mark for one year (insurance premium to be paid to insurance agency and charged as a disbursement). If authorised in the Customs application PoA to do so, Rouse can assist in arranging insurance from a third party carrier. The required insurance covers claims by third parties in the event that suspected counterfeits are wrongly detained by Customs at the request of the rights holder. (Note: We know of no case in which a rights holder was found liable for detaining a shipment. There have been several attempts, but so far the courts have refused these claims.) |
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2. Information on Genuine Goods/Importers |
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Document |
Formalities/Notes |
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Tax Certificate (INN)
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These three documents are required from ALL authorised importers.
No formalities required (scanned copies are sufficient).
If not stated elsewhere in the documents, the full name and address of all authorised importers must be provided. |
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Letter from Office of Statistics (Goskomstat Letter) |
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Company Registration Document (OGRN) |
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Information on Authorised Trade Routes |
Not obligatory, but recommended. |
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Harmonised Commodity Description Codes |
Customs codes (tariff codes/TNVED codes) in relation to all genuine goods in all classes for which action is requested. Rights holders’ local businesses are often able to provide this information. We can identify these codes, but it may be unnecessarily time consuming for us to do so. |
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3. Information on Counterfeit Goods/Importers |
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Document |
Formalities/Notes |
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Information on How to Distinguish between Legitimate and Counterfeit Products |
The more detailed, the better. A PowerPoint presentation or similar with pictures and comparative analysis of original vs. counterfeits is much appreciated. This information is treated as confidential.
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List of Known Facts |
Names of previous targets and known counterfeiters, including importers, exporters, and shipping routes, if known. Information on market side enforcement is highly encouraged. Again, the more detailed, the better. |
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Photos of Counterfeit Products (Ideally with Local Labelling) |
Importantly, Customs require evidence of counterfeits being available in Russia. Merely claiming counterfeits are available is likely to be insufficient. Proof is usually required. This could be: • From a seizure by police in Russia (copies of request and reply confirming goods are counterfeits, ideally with pictures of goods in question); • From a detention by Russia Customs (copies of request and reply confirming goods are counterfeits, ideally with pictures of goods in question); • From a purchase evidenced by official (stamped) invoice from a trader in Russia. Where such evidence is not available we can assist clients through internet searches/purchases and/or engaging investigators to implement market surveys and sample purchases. |
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Applications covering multiple trade marks, are possible, but not recommended. They can result in an entire Customs Application being invalidated because of a discrepancy in relation to one of the marks. Applications can always be broadened by separate recordals for the same rights holder at a later date: initially they should only refer to the most important marks and classes, and be reviewed after the first year.
If there is any subsequent change in rights holder details (e.g. name or address), authorised importers, or any other notable information, the Customs Application must be amended as soon as possible. We will able to advise on exact required documents in each case.
Once the documents have been filed with the Federal Customs Service (FCS) of Russia, the registration process begins. The FCS, however, has the right to request additional documents/information/clarification. In practice, the registration process often takes longer than two months.
The maximum term of a Customs Recordal is two years. After that they can be renewed. Applications for renewal should be made no later than two months prior to the expiry date.
Action that can be taken in relation to infringements identified by Customs
N.B. We strongly recommend that action should be taken in relation to each and every Customs seizure, irrespective of the amount of goods involved. If this is not done, it is likely that Customs will quickly conclude that detentions for that rights holder are a waste of time and thus will not take action in relation to future imports.
Counterfeits
a) When Customs identifies a consignment of suspected counterfeit products it should suspend release of the goods and, within one to two working days, contact the representative of the rights holder. The official notification from Customs is usually sent by fax, accompanied by pictures of the goods sent by email. The suspension period lasts for 10 working days, which can be extended for another 10 days at the written request of the rights holder’s representative. Quite often the quality and quantity of pictures and information is not good enough to enable accurate identification, especially for goods with complicated indicators. In such circumstances, we liaise with Customs to try to obtain better pictures and further details in relation to the consignment.
b) If the goods are confirmed to be counterfeit, we would forward a request to Customs to take action against the importer. The request must be accompanied by the following documents:
Customs has the right to request additional documents/information needed for taking action.
c) On the basis of the documents received, Customs may initiate action, which will usually be administrative in nature. First, an administrative investigation is undertaken. Although the time for this investigation is one month, the period can be extended – in practice, Customs usually takes between one and two months to carry out the investigation. The matter will then be referred to the relevant Court, with the rights holder named as a third party. The rights holder will be entitled to provide to the Court its own position paper on the case, participate in the court hearings to support/control Customs, appeal against an unfavourable decision, etc. Initially, however, the case will be between Customs and the infringer, meaning that the rights holder’s involvement is minimal and the cost low.
d) If it accepts the case, the Court will set hearing dates. Official notification is sent to Customs and, if it has been named as a third party, to the rights holder.
e) After notification of the hearing dates is received, a decision should be taken whether or not to participate directly in the hearings. Where a significant number of goods is involved, the infringer is known to be a large-scale offender, or the region is known to be difficult, it is strongly recommended that the rights owner take part in all the hearings. Simple cases can usually be followed from the desk, with direct participation only when the need arises.
f) Where the Court finds infringement, the goods will be confiscated for destruction (at the expense of the State).
g) In the event of an unfavourable decision, the rights holder or its representatives will be entitled to file an appeal to the relevant Court.
Parallel imports
a) When Customs identifies a consignment that is being shipped to any entity/person not listed as an authorised importer, it should suspend release of the consignment and, within one to two working days, notify the rights holder’s representative. The goods will be held for 10 working days, which may, at the written request of the rights holder’s representative, be extended for another 10 days.
b) Customs cannot take administrative action in respect of parallels, so the procedures set out above in relation to counterfeit goods are not available. Instead, the rights holder may file a civil case with the relevant Arbitration Court, naming Customs as a third party and seeking an interim injunction to prevent release of the goods. If the injunction is granted, the consignment is kept with Customs until the final Court decision.
c) The rights holder is entitled to request the following in an Arbitration court action:
The actual amount to be awarded to the rights holder will be established by the Court in any given case.
d) The rights holder’s representative should participate directly in all hearings.
Establishing good working relationships with Customs
The establishment and maintenance of good relations with Customs, combined with ongoing cooperation in relation to enforcement, is essential. A key element will be appropriate training, enabling Customs to understand the particular IP involved and identify infringements.
FCS regularly organises Federal IPR training, as well as training in each of the regional Customs divisions (although such training have been much less regular over the last 2-3 years). As a rule, rights holders must have a Customs Application in place before they can take part in any of these training sessions. We strongly recommend that rights holders participate in these training events whenever feasible, with particular focus on the regions in which most imports are anticipated, so as to maintain a sufficient level of awareness amongst Customs officers and ensure they know they will receive support in the event of any detentions.
We hope you have found this Guide helpful. If you have any questions or want to discuss with Rouse how working with Russian Customs can help to protect your rights, please contact Stuart Adams (sadams@rouse.com) or Yana Tsygankova (ytsygankova@rouse.com).