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Counterfeit protection: how to defend your intellectual property rights?

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Law firm "Aventa". September 2014

Currently, liability for violations of intellectual property rights is enshrined in the Civil Code of the Russian Federation (CC), the Code of Administrative Offenses (CAO) and the Criminal Code of the Russian Federation (CC). The following is an excerpt from the articles of these three sources regarding liability for violations of these rights.

GK:

Article 1253. Responsibility of legal entities and individual entrepreneurs for violations of exclusive rights

If a legal entity repeatedly or grossly violates the exclusive rights to the results of intellectual activity and to means of individualization, court may, in accordance with paragraph 2 of Article 61 of this Code decide on the liquidation of such a legal entity at the request of the prosecutor. If such violations are committed by a citizen, hisactivity as an individual entrepreneur may be terminatedby decision or sentence of the court in the manner prescribed by law.

Article 1301. Responsibility for violation of the exclusive right to work

In cases of violation of the exclusive right to the work author or other copyright holder along with the use of other applicable methods of protection and measures of liability established by this Code (Articles 1250, 1252 and 1253), has the right in accordance with paragraph 3 of Article 1252 of this Code to demand, at his choice, from the violator, instead of damages, to pay compensation:

  • in the amount of ten thousand rubles to five million rubles, determined at the discretion of the court,
  • twice the cost of copies of the work or twice the cost of the right to use the work, determined on the basis of the price, which under comparable circumstances is usually charged for the lawful use of the work.

Article 1311. Responsibility for violation of the exclusive right to an object of related rights

In cases of violation of the exclusive right to an object of related rights the owner of the exclusive right along with the use of other applicable methods of protection and measures of liability established by this Code (Articles 1250, 1252 and 1253), has the right in accordance with paragraph 3 of Article 1252 of this Code to demand, at his choice, from the violator, instead of damages, to pay compensation:

  • in the amount of ten thousand rubles to five million rubles, determined at the discretion of the court,
  • twice the cost of copies of a phonogram or twice the value of the right to use an object of related rights, determined on the basis of the price, which under comparable circumstances is usually charged for the lawful use of such an object.

Article 1472. Responsibility for violation of the exclusive right to a production secret

1.Intruder exclusive right to the secret of production, including a person who illegally obtained information constituting a production secret and disclosed or used this information, as well as a person obliged to keep the secret of production confidential in accordance with paragraph 2 of Article 1468, paragraph 3 of Article 1469 or paragraph 2 of Article 1470 of this Code, shall be obliged to compensate losses caused by the violation of the exclusive right to a production secret, unless otherwise provided by law or by agreement with this person.

2. A person who used the production secret and did not know and should not have known that its use was illegal, including due to the fact that he gained access to the production secret by accident or by mistake, is not responsible in accordance with paragraph 1 of this article.

Article 1515. Responsibility for the illegal use of a trademark

1. Goods, labels, packaging of goods on which a trademark or similar designation is confused, are counterfeit.

2. The rightholder has the right to demand the withdrawal from circulation and destruction at the expense of the infringer of counterfeit goods, labels, packages of goods on which the illegally used trademark or similar designation is confused.In cases where the introduction of such goods into circulation is necessary in the public interest, the right holder is entitled to demand the removal of the illegally used trademark or similar to the degree of confusion designation from the counterfeit goods, labels, packaging of goods.

3. A person who has violated the exclusive right to a trademark while performing work or providing services, must remove the trademark or designation similar to the extent of confusion from the materials that accompany the performance of such work or the provision of services, including documentation, advertising, signage.

4. The copyright holder has the right to demand of his choice from the violator, instead of damages, payment of compensation:

  • in the amount of ten thousand to five million rubles, determined at the discretion of the court based on the nature of the violation,
  • double the value of the goods on which the trademark is illegally placed, or double the value of the right to use the trademark, based on the price, which under comparable circumstances is usually charged for the legitimate use of the trademark.

5. A person making warning labels in relation to a trademark not registered in the Russian Federation shall be liable in the manner prescribed by the legislation of the Russian Federation.

Article 1537. Responsibility for the illegal use of an appellation of origin

1. The copyright holder is entitled to demand withdrawal from circulation and destruction at the expense of the infringer of counterfeit goods, labels, packages of goods that contain the illegally used appellation of origin or similar designation to the extent of confusion. In cases where the introduction of such goods into circulation is necessary in the public interest, the right holder has the right to demand the removal of the illegally used appellation of origin of the goods or similar designation to the degree of confusion from the infringer at the expense of the infringer.

2. The copyright holder has the right to demand of his choice from the violator, instead of damages, payment of compensation:

  • in the amount of ten thousand to five million rubles, determined at the discretion of the court based on the nature of the violation,
  • twice the value of goods on which the appellation of origin of goods is illegally placed.

3. A person making warning labels in relation to an appellation of origin not registered in the Russian Federation shall be liable in the manner prescribed by the legislation of the Russian Federation.

CAO:

Section 7.12. Infringement of copyright and related rights, inventive and patent rights

1. Import, sale, rental or other illegal use of copies of works or phonograms for the purpose of generating income in cases where copies of works or phonograms are counterfeit in accordance with the legislation of the Russian Federation on copyright and related rights or on copies of works or phonograms are indicated false information about their manufacturers, about places of their production, as well as owners of copyright and related rights, as well as other violation of copyright and related rights in order to extract profit Oh yeah,with the exception of cases provided for in paragraph 2 of Article 14.33 of this Code, -

shall entail the imposition of an administrative fine on citizens in the amount of from one thousand five hundred to two thousand rubles with confiscation of counterfeit copies of works and phonograms, as well as materials and equipment used to reproduce them, and other instruments for committing an administrative offense, on officials - from ten thousand to twenty thousand rubles with the confiscation of counterfeit copies of works and phonograms, as well as materials and equipment used to reproduce them, and other instruments of the admin trativnogo offense, for legal entities - from thirty thousand to forty thousand rubles with confiscation of counterfeit copies of works or phonograms, as well as materials and equipment used for their reproduction, and other instruments of committing the administrative offense.

2. Illegal use of an invention, utility model or industrial design,except as provided part 2 of article 14.33of this Code, disclosure without the consent of the author or applicant of the essence of the invention, utility model or industrial design prior to the official publication of information about them, attribution of authorship or coercion to co-authorship -

shall entail the imposition of an administrative fine on citizens in the amount of from one thousand five hundred to two thousand rubles, on officials - from ten thousand to twenty thousand rubles, on legal entities - from thirty thousand to forty thousand rubles.

Section 14.10. Trademark Illegal Use

1. Illegal use of another's trademark, service mark, appellation of origin or similar designations for homogeneous goods,except as provided for in paragraph 2 of this article, -

shall entail the imposition of an administrative fine on citizens in the amount of from one thousand five hundred to two thousand rubles with confiscation of items containing illegal reproduction of a trademark, service mark, appellation of origin, on officials - from ten thousand to twenty thousand rubles with confiscation of items containing illegal reproduction of a trademark, service mark, appellation of origin, to legal entities - from thirty thousand to forty thousand rubles with confiscation of the subject c, containing illegal reproduction of a trademark, service mark, appellation of origin.

2. Production for sale or sale of goods containing illegal reproduction of another's trademark, service mark, appellation of origin or similar designations for homogeneous goods, with the exception of cases provided for in paragraph 2 of Article 14.33 of this Code,if the specified actions do not contain a criminal offense, -

shall entail the imposition of an administrative fine on citizens in the amount of a single amount of the value of the goods that were the subject of an administrative offense, but not less than two thousand rubles with its confiscation, on officials - a double amount of the value of the goods which was the subject of an administrative offense, but not less than twenty thousand rubles from it confiscation, for legal entities - three times the value of the goods, which was the subject of an administrative offense, but not less than forty thousand rubles from its confiscation her.

Section 14.33. Unfair competition

2. Unfair competitionexpressed in the introduction into circulation of goods with illegal use of the results of intellectual activity and equivalent means of individualization of a legal entity, means of individualization of products, works, services, -

shall entail the imposition of an administrative fine on officials in the amount of twenty thousand rubles or disqualification for a period of up to three years, on legal entities - from one hundredth to fifteen hundredths of the amount of the proceeds of the offender from the sale of goods (work, services) in the market of which the offense was committed, but not less than one hundred thousand rubles.

UK:

Article 147. Violation of inventive and patent rights

1. Illegal useinvention, utility model or industrial design,disclosure without the consent of the author or applicant of the essence of the invention, utility model or industrial design prior to the official publication of information about them, attribution of authorship or coercion to co-authorship,if these acts caused major damage, -

shall be punishable by a fine in the amount of up to two hundred thousand rubles or in the amount of the convict's salary or other income for a period of up to eighteen months, or by compulsory labor for a term of up to four hundred and eighty hours, or forced labor for a term of up to two years, or imprisonment for the same term.

2. The same acts committed by the group persons by prior conspiracy or by an organized group, -

shall be punished by a fine in the amount of one hundred thousand to three hundred thousand rubles, or in the amount of the convict's wages or other income for a period of one year to two years, or by forced labor for a term of up to five years, or by arrest for a term of up to six months, or by deprivation of liberty for up to five years.

Article 180. Illegal use of a trademark

1. Illegal use of another's trademark, service mark, appellation of origin or similar designations for homogeneous goods,if this act is committed repeatedly or has caused major damage, -

shall be punishable by a fine in the amount of up to two hundred thousand rubles or in the amount of the convict's salary or other income for a period of up to eighteen months, or by compulsory labor for a term of up to four hundred and eighty hours, or correctional labor for a term of up to two years.

2. Illegal use of warning labels in relation to a trademark not registered in the Russian Federation or appellation of origin of goods, if this act is committed repeatedly or has caused major damage, -

shall be punishable by a fine in the amount of up to one hundred and twenty thousand rubles, or in the amount of the convict's salary or other income for a period of up to one year, or by compulsory labor for a term of up to three hundred and sixty hours, or correctional labor for a term of up to one year.

3. Acts provided for in parts one or two of this article committed by a group of persons in a preliminary conspiracy or by an organized group, -

shall be punishable by a fine in the amount of five hundred thousand to one million rubles or in the amount of the convict's wages or other income for a period of three to five years, or by forced labor for a term of up to five years, or imprisonment for a term of up to six years with a fine of up to five hundred thousand rubles or in the amount of wages or other income of the convicted person for a period of up to three years or without it.

Law firm "Aventa". September 2014

Counterfeit: what is it?

The term "counterfeit" probably has French and Latin roots. In the dictionary of foreign words, "contrefaction" is translated as a fake, and the components of this word - "contra" and "facere" - are designated as "against" and "do", respectively. The concept of counterfeit is repeatedly found in laws and other regulatory legal acts of the Russian Federation. According to Article 1252 of the Civil Code of the Russian Federation, counterfeit products are those whose manufacture or use leads to a violation of intellectual property rights.

As an example of counterfeiting, you can cite products that are often found on the domestic market, labeled with the name of the manufacturing company with an “error”. It can be “Abibas”, instead of “Adidas” or “Simenc” instead of “Siemens”, etc. Sometimes, distributors of counterfeit goods do not change the logo of a well-known company, but simply copy it and apply it to products of their own production. Counterfeiting should also include any distribution of musical, artistic, literary works or the use of patented technologies and developments without the permission of the copyright holders.

What is the danger of counterfeiting? First of all, circulation of fake goods on the market can be harmful to public health. Secondly, like any illegal activity, the production and distribution of counterfeit goods does not bring revenue to the state budget. Thirdly, this, of course, is detrimental to the interests of copyright holders, because:

  • robs them of their legitimate profits,
  • reduces the demand for original goods,
  • leads to loss of credibility among buyers,
  • Forcing to invest new funds in the promotion of goods, the reputation of which has suffered.

Counterfeit goods should be distinguished from counterfeit goods. Using the concepts given in the Federal Law dated 12.04.2010 No. 61-ФЗ “On the Circulation of Medicines”, goods may be considered falsified, information on the composition and (or) manufacturer of which does not correspond to reality. It is important that the counterfeit product may be products manufactured in a legal way, but with a violation of technology or composition. Such actions, unlike falsification, do not always entail a violation of intellectual property rights.

Practitioners argue that counterfeit goods are often confused with products received in the country as a result of “parallel” imports. Such objects are manufactured outside the Russian Federation, legally marked with the trademark of the copyright holder, but are imported into our country without his knowledge, which, of course, violates the rights of the owner.

Having dealt with similar concepts, we consider in more detail the types of counterfeit products. Это поможет более четко обрисовать существующую проблему и найти пути ее решения.

Виды контрафактной продукции

According to Russian law, state legal protection is granted to the results of intellectual activity and means of individualization of legal entities, goods and services.

Copyright is granted to such types of objects as:

  • literary and dramatic works and pantomimes,
  • musical works with or without text,
  • Audiovisual works (films),
  • works of painting, sculpture,
  • works of decorative, applied and scenographic art,
  • works of architecture, urban planning and landscape art,
  • geographical, geological and other maps,
  • computer programs.

Related rights are granted to copyright holders of databases, performances, phonograms, broadcasts of broadcasting or cable broadcasting organizations, patent rights - to inventions, utility models, industrial designs. The types of intellectual property covered by the rights to means of individualization include brand names, trademarks and service marks, appellations of origin, as well as commercial designations.

In cases in the field of intellectual property protection, the following cases are often considered:

  • illegal use of trademarks and trade names without amending them,
  • creating a means of individualization (for example, a trademark) similar to the original to the extent of confusion,
  • production, distribution and use of phonograms, videos, computer programs without the appropriate permission of the copyright holder.

In the industrial sphere, counterfeit products were identified mechanisms, structures, technologies made using patented inventions, utility models and industrial designs. What measures of responsibility await violators for these actions and whether they can be considered effective, read on.

Responsibility for violation of intellectual property rights

The state has provided several ways to protect intellectual property rights. Business entities independently choose one that is suitable taking into account the nature of the violated right and its consequences. As a general rule, civil liability for counterfeiting products occurs only if the offender is at fault. In this case, the offender must prove the absence of guilt. Civil law measures to protect the rights to the results of intellectual activity and means of individualization are:

  • recognition of the right to an intellectual property,
  • termination of actions that violate rights or create a threat of their violation,
  • indemnification
  • the seizure and destruction of a material carrier in which the result of intellectual activity or a means of individualization is expressed from the illegal owner,
  • publication of a court decision on the fact of violation.

Violators in the field of intellectual property rights are brought to civil, administrative and criminal liability.

Article 1253 of the Civil Code of the Russian Federation as a measure of responsibility for repeated or gross guilty violation of intellectual property rights provides for the liquidation of a legal entity and the termination of the activities of an individual entrepreneur by a court decision.

At the choice of the copyright holder, instead of damages, the violator in civil law may oblige to pay compensation in the following amounts:

  • for violation of the exclusive right to work - from 10 thousand to 5 million rubles, in 2 times the value of counterfeit copies, in 2 times the value of the right to use the work (article 1301 of the Civil Code of the Russian Federation),
  • for violation of the right to an invention, utility model or industrial design - from 10 thousand to 5 million rubles, in 2 times the value of the right to use the intellectual property (article 1406.1 of the Civil Code of the Russian Federation),
  • for illegal use of a trademark - from 10 thousand to 5 million rubles, in 2 times the value of goods that are illegally marked (article 1515 of the Civil Code of the Russian Federation).

Main measures administrative responsibility for violations of intellectual property rights are a fine and confiscation of counterfeit products, as well as materials and equipment for their creation and reproduction. The size of the fine depends on the object of the offense, the type of illegal actions and the subject of the offense. For violation of copyright, related and patent rights under article 7.12 of the Administrative Code of the Russian Federation, a fine is provided in the following amounts:

  • for individuals - from 1.5 thousand to 2 thousand rubles,
  • for officials - from 10 thousand to 20 thousand rubles,
  • for legal entities - from 30 thousand to 40 thousand rubles.

For illegal use of commodity The Code of Administrative Offenses (Article 14.10) provides for a fine of:

  • for individuals - from 5 thousand to 10 thousand rubles,
  • for officials - from 10 thousand to 50 thousand rubles,
  • for legal entities - from 50 thousand to 200 thousand rubles.

For patent infringement a person may be brought to criminal liability (Article 147 of the Criminal Code) in the form of a fine, compulsory labor, arrest up to 6 months, forced labor or imprisonment for up to 5 years. Illegal use of personalizationif it caused major damage, it may result in a fine, compulsory, forced or corrective labor, imprisonment of up to 2 years. If these actions were committed by an organized group, the term of imprisonment may be increased to 6 years (article 180 of the Criminal Code of the Russian Federation).

Despite seemingly serious measures of responsibility, the production and sale of counterfeit goods continue to be common in Russia. What should an entrepreneur do if his rights are violated?

Counterfeiting Methods

Before talking about restoring violated rights, it is necessary to find out how to simplify the identification of such facts.

In 2004, the Customs Register of Intellectual Property Objectives began to work in Russia to increase effective customs control. This database allows you to quickly and efficiently identify violations of exclusive rights when exporting / importing counterfeit goods. A stop at the customs of the goods entered in the register gives the agency employees the right to detain him for an appropriate check. If the fact of plagiarism is confirmed as a result of the examination, officials independently bring the violator to administrative responsibility, and the copyright holder has the opportunity to apply for compensation to the arbitration court.

In order to enter an object (trademark, service mark, appellation of origin, object of copyright or related rights) in the register, you must contact the Federal Customs Service with a statement. The term of its consideration is 1 month. Legal protection of this type is provided for 2 years from the date of entry of the object, it is extended an unlimited number of times at the request of the copyright holder.

But if the rights are violated, then there are two main ways to combat the violation of intellectual property rights - pre-trial and judicial order. There are several forms of pre-trial protection of intellectual property rights:

  • sending a pretrial claim to the offender demanding to stop illegal actions, pay compensation to the copyright holder or compensate losses, conclude a license agreement and so on,
  • appeal to the police with a statement on bringing the offender to administrative or criminal liability (depending on the severity of the offense and its qualifications),
  • appeal to the antimonopoly service with a statement on recognition of the actions of the violator as an act of unfair competition.

In addition, measures taken to restore the violated rights and stop the illegal use of intellectual property can include appeals to partners, customers and buyers of the violator in order to refuse to purchase counterfeit products, a message to Rospatent about circumstances that prevent the legal registration of a trademark . The main goal of pre-trial measures is to stop the violation as quickly as possible and put the offender at the negotiating table in order to get decent compensation from him.

In a situation where the measures taken are not enough, the only thing left for the business entity is to go to court.

Cases of violation by individuals and legal entities of intellectual property rights are considered in the arbitration court. To do this, the copyright holder or his representative applies to the state body with a statement of claim in the manner prescribed by the Arbitration Procedure Code of the Russian Federation.

Due to the specifics of intellectual rights, as well as the difficulty of identifying and proving a violation, disputes of this category are extremely complex.

As practice shows, the sale of counterfeit goods can exceed the sales volumes of original products, which negates any efforts of the copyright holder in the direction of business development. In order to protect their intellectual rights, it is necessary to use all methods provided by law. An absolute necessity is the registration of intellectual property rights. In addition, it is important to use the opportunities provided by the state, in particular, to add intellectual property to the register of the Federal Customs Service.

Legal assistance in the protection of intellectual property

Actual legislation provides real ways to protect copyright holders from the negative impact of counterfeit products, however, their effective application requires knowledge and experience in the field of intellectual property disputes. Legal support in such cases is indispensable. How to choose a lawyer for intellectual rights, and what are the advantages of contacting professionals, says the leading lawyer of the company Patentus Akimov Andrey Valerievich:

“The main task of an intellectual property lawyer is to quickly block a violation and achieve decent compensation. To obtain such a result, it is necessary to effectively use all existing tools in practice. To collect evidence in the case, Patentus specialists resort to test purchases, monitor counterfeit products on the Internet, and interact with potential buyers and partners of violators. In addition, standard tools are also used: appeals to the control and supervision, law enforcement and registration authorities. When choosing a lawyer for intellectual property rights, it is necessary to pay attention to the profile of his activity and competence. This category of cases requires constant involvement in judicial practice. Only an experienced professional succeeds. ”

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