The Presidium of the Supreme Commercial Court of the Russian Federation (the “SCC”) has considered the issue of administrative liability for placing trademark owned by others on shipping documents.
Circumstances of the case
Russian company (the “Defendant”) presented imported garden equipment for customs clearance. Customs authority found that the customs declaration for goods as well as accompanying documentation (invoice, packing list, conformity certificate, technical documentation) contained a verbal mark «HUSHCVANA».
The subsequent expertise determined that this mark is confusingly similar to a world-renowned trademark «Husqvarna», owned by «Husqvarna AB» (the “Right holder”). The latter had not given the Defendant the right to use this name.
Customs authority brought an action before the court demanding that the Defendant be held administratively liable for the unlawful use of trademark according to article 14.10 of The Code of Administrative Offences of the Russian Federation.
Position of commercial courts
Commercial courts of first and appeal instances noted that using a trademark that is confusingly similar with Right holder’s trademark on shipping documentation is not an administrative offence.
Approach of the SCC
The SCC rejected the demand of Customs authority since the period of limitation for administrative liability had already expired by the time of the hearing at the Presidium of SCC. At the same time, the SCC overruled lower courts’ rulings noting that:
- the presence of the trademark on documentation required to introduce goods into civil turnover is an exercise of exclusive right and it serves to individualise these goods;
- the placement of trademark owned by others on goods and documentation, required to introduce goods into civil turnover, as well as the import of such goods into Russia constitutes unlawful use of trademark;
- if the documentation used to import goods into Russia contains the illegal reproduction of the means of individualisation, as well as if such goods are introduced into turnover, these will constitute an administrative offence.
This ruling of the SCC may become a ground for revision of existing court rulings on similar cases.
Thus, the SCC consistently strengthens positions of right holders and customs authorities in disputes against unauthorized importers violating their rights. In this respect, a new wave of disputes caused by unlawful use of trademarks, including their unlawful use on shipping documents, is expected.
Leonid Zubarev and Elena Baryshnikova