Problems and prospects of security and protection of rights to objects of intellectual property (taking into account the experience of the European Union)

Author: Oksana L. Kurochkina,
Barrister, Head of the Working group on intellectual property of
Expert Council on customs regulation of the Committee on budget and taxes of
State Duma of the Russian Federation

In this report I, as the head of the Working group on intellectual property of Expert Council on customs regulation, and a practicing barrister of Bar association Customs & Corporate Lawyers would like to highlight some of the problems in the sphere of intellectual property rights, which currently encountered by Russian legal owners and participants of foreign trade activities.
Conducting analysis of complaints to the Bar association after the 1st July 2010, the following can be noted.
Firstly, the creation of a single customs zone led to a change in perimeter of the common customs borders, increase turnover and, respectively, to the growth of imports to the Russian Federation.
Secondly, previously, before the creation of the Customs Union, the copyright holders and official importers interested in protection of their interests by the customs authorities sought on the inclusion of trademarks into customs register of intellectual property objects (TROIS). Now, in accordance with the Agreement dated may 21, 2010 «On single customs registry of intellectual property of the countries-members of the Customs Union», the common customs register of intellectual property, subject to legal protection in each country-member of the Customs Union. Such innovation requires long and expensive procedures for the registration and does not exclude conflicts in cases where intellectual property objects in different national registers belong to different parties.
As a result of intellectual property owners and official distributors, interested in the fight against counterfeiting, today are faced not only with changes in definitions, methods and forms of intellectual property protection, but also with the fact that effective protection requires significant time and cost.
In this situation, we can recommend the right holders of more efficient use of already existing instruments of protection and enforcement of intellectual property rights.
We are talking about the introduction of the Federal law of November 27, 2010 N 311-FL «On customs regulation in the Russian Federation» the principle of «ex officio» (in accordance with article 308 of the aforementioned law, the customs authorities may suspend the release of goods containing objects of intellectual property, not included into the customs register, when signs of infringement of intellectual property rights and information on legal owner or his representative on the territory of the Russian Federation), and the increase in the Customs code of the Customs Union (article 99) the timing of the customs control after the release of goods to 3 years. I’m not going to talk about already identified deficiencies of these instruments at the conference today will speak on these topics. It will be about another. The use of the mentioned above instruments, together with existing information technology, allows owners of intellectual property objects or their representatives to defend their interests, using non-juridical forms of protection (i.e. referring to the customs authorities), as in the cases where a counterfeit products border of the Russian Federation and in the future a common customs border of the Customs Union, and in the cases of counterfeit goods in the common customs territory.
I explain a little bit how this is implemented based on the experience of our Bar association. The existence of a unified information base accounting preliminary and already registered goods declarations allows rights holders with the help of the developed software for revealing of crossing the customs border of goods containing the owned intellectual property. This is the basis for preventive appeals statements to customs and run the latest mechanism «ex officio». In addition, revealing such facts allows you within 3-year period of customs control, using circulation in the customs and law enforcement bodies, as well as the legislation on administrative offences, effectively prevent the spread of counterfeit products on the single customs territory.
Note that the use of these instruments effectively not only for foreign importers, but also for domestic producers. It is clear those supplies from third countries, for example, on the territory of Russia; the Russian production is likely to indicate that such products are not original.
Here is one more important point. In the current customs legislation enforcement measures may be applied only in respect of goods that contain objects of copyright and related rights, trademarks, service marks and appellations of origin of goods included in the customs register of intellectual property objects. Consequently the legal protection of other intellectual property objects is not provided due to the absence of such authority, the customs authorities.
This approach is partly reflected in the TRIPS agreement where as protected objects are the rights to trademarks and copyrights. Of course, fixing this list justified practical possibilities of the customs authorities in the implementation of the control, because of infringements in the field of trademarks and copyright sufficient visual control. However, by the TRIPS Agreement has not established that the customs authorities carry out protection of the above number of objects of intellectual property and the possibility of customs authorities to implement measures to protect and promote the protection of intellectual property objects.
It is clear that today before the legislators and law enforcement agencies, and so is a large quantity of important problems requiring urgent resolution. However, in my opinion, the need for the protection of industrial property rights through the customs control tools will eventually increase, and taking into account the innovation processes and the course of the modernization, to become more important.
Therefore I suggest, recognizing this need, study and adopt the experience of other countries on this issue. The most successful here, in my opinion, is the legal basis, created in the framework of the European Union (EU) and World trade organization (WTO).
Another range of problems connected with violation of rights of Russian copyright holders outside of the Customs Union. Moreover, it is faced with this as the owners of intellectual property, and participants of foreign trade activities, engaged in export of production on the basis of license agreements with the Russian Federation.
Like I mentioned earlier, within the European Union there is a very effective system of intellectual property protection. However, to obtain appropriate legal protection, Russian right holder has to pass procedure of registration of rights.
In the European Union created a unified regional system of protection of trademarks – unified brand of the European Union (community trade mark). The trademark registration of the European Union submitting a proposal to a single registration authority – the Office for harmonization in the internal market (The Office for Harmonization in the Internal Market). The registered trademark receives legal protection throughout the EU. However, using the European unitary system of registration, Russian applicant should be ready for possible denial of legal protection of a trademark throughout the EU, if one of the national offices fails to provide protection.
In the field of protection of patents also created special uniform filing systems at international and regional levels. In 1970, he was an international patent cooperation treaty (PCT), which created a simplified and more cost-effective system for protection for inventions in several states. PCT allows seek patent protection for an invention simultaneously in each of a large number of countries by filing a single application, instead of making several separate national or regional patent applications. In this case, hosts an international search and international preliminary examination of the application to establish the potential patentability of the invention.
On the basis of the European patent Convention of October 5, 1973 was established uniform regional procedure of submission of the application for the grant of a European patent. Application is submitted in a single registration centre – European patent office, which is subject to review. Issuance of European patent may be applied for one or several States. The issued by the European patent shall have the same effect and is subject to the same conditions as the national patent. Currently Russian holder can use the procedure for the grant of the European patent with an indication of the countries in which protection is sought, or use separate enrollment in the national patent offices.
In case of conflict, the resolution of patent disputes is carried out in the system of the national courts of the member States of the European Union, since the system of European patent courts was never established. Here you can proceeding from the experience of our Association, noted the contradictory court practice of homogeneous cases and situations when the Russian holders must defend their rights in several EU member States simultaneously.
Currently carry out protection of the rights to the use of industrial designs of the Russian applicants can only in one way – by filing a separate application for registration of industrial designs directly to each patent office of the interested States or international organizations of the European Union). To obtain legal protection of industrial design on the territory of the EU, the applicant must submit an application to the Office for harmonization in the internal market, which independently carries out the entire registration procedure.
Speaking about the available Russian right holder protection mechanisms, it is worth noting that on the territory of the European Union adopted the Directive of the European Parliament and of the Council 2004/48/EC for enforcement of intellectual property rights.
This Directive specifies the persons who have the right to appeal for the application of measures of protection and measures of liability. These include: the right holders, other persons having the right of use of intellectual property rights, collective organizations for the management of intellectual property, organizations conducting professional protection of intellectual property rights. Directive indicates the possibility of applying measures of protection as the other person, which has a direct interest or legal relationship».
An important provision set out in Directive is securing the security measures that apply to proceedings under the case and may be in the detailed description of counterfeit goods (with the seizure of samples, or without it) and seizure of such goods. Also in the Directive included the norm of preliminary and preventive measures that will allow the court to issue a judicial act aimed at the prevention of violations of the rights to objects of intellectual property or the cessation of continuing violations of the rights. This judicial act may also contain a prescription is similar to the Russian Institute for security for the claim, in which the court may require the provision of certain guarantees for the payment of compensation to the right holder. Moreover, the Directive thought out mechanism preventing the use of provisional measures in order to unfair competition.
Thus, operating under the European Union system of protection of rights to objects of intellectual property in full may be available in Russian to the right holder, if the proper registration of their rights within the EU and with the understanding provided such registration capabilities.