The Plenum of the Russian High Arbitrazh Court (HAC) adopted a resolution which clarifies a number of provisions of the Code of Administrative Offenses relating to trademark rights and unfair competition.
According to the HAC resolution of 17 February 2011, an infringing use of a trademark is not limited to the mere placement of a trademark on a product; it also includes the introduction of counterfeit goods into the market in Russia and the import of such goods into Russia with the purpose of introducing them into the market. Thus, any person engaged in the trade of counterfeit goods may be held liable, not only the first importer.
The HAC further clarified that only the person that first put the infringing goods onto the market may be held liable for unfair competition (as opposed to unlawful use of trademarks). In addition, the acquisition of goods bearing an infringing trademark, its storage and transportation, in the absence of a purpose to put such goods onto the market, do not constitute an infringement of law.
A legal entity can be held liable for an administrative offense if it can be proven that it used another person’s trademark without verifying that there are valid grounds for such use.
Finally, the HAC resolution provides that the powers of the customs authorities in the protection of intellectual property rights extend only to goods under customs control, i.e. goods imported into or exported from the Russian Federation.
Natalia Gulyaeva
Hogan Lovells