We are often asked whether obtaining intellectual property protection in China is worthwhile (the answer is often yes, by the way). However, in the current geopolitical climate, a better question may be whether obtaining IP in Russia is a worthwhile proposition.
Many column inches have been devoted to the human and political consequences of Russia’s invasion of Ukraine by those more knowledgeable. While the consequences to the owners of Russian IP rights are clearly not anywhere near the scale of the current humanitarian crisis, they are still of great concern to those with business interests in Russia.
Until the commencement of the war in Ukraine, Russia was a relatively reasonable place in which to obtain and enforce intellectual property rights (albeit with the usual provisos of enforcement in a genuine Second World nation). However, since the imposition of sanctions on Russia by Western nations, it appears that the rights of foreign IP owners will no longer be respected.
In a recent Court decision regarding the infringement of trade mark rights relating to the popular British cartoon character Peppa Pig, the judge dismissed the case, stating that Peppa Pig trade marks in Russia can be used by Russian businesses without consequence due to the “unfriendly actions of the United States of America and affiliated foreign countries”. These affiliated foreign countries include Australia, the UK, Japan and European Union countries.
Following this decision, trade mark applications for marks rightly owned by McDonalds and Starbucks have been filed by Russian applicants. This is likely to be the tip of the iceberg.
No. Article 1 of The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), to which Russia is a signatory, states that “Members shall accord the treatment provided for in this Agreement to the nationals of other Members”. Explicitly violating the rights of foreign IP owners in favour of your own citizens is clearly contrary to the TRIPS Agreement.
But given what is happening in Ukraine, it is also clear that upholding international law may not be of great concern to the Russian government.
If you currently hold intellectual property rights (patents, trade marks or designs) in Russia, the stark reality is that any Russian business can now use your IP to produce counterfeit products without consequence.
In addition, Russian trade marks become vulnerable to removal from the Register for non-use if they remain unused for a period of three years. If the economic sanctions placed on Russia drag on, it is possible that many foreign trade mark owners will be unable to use their marks in Russia for some time, potentially leaving them vulnerable to removal.
There is nothing you can currently do about any infringement of your IP rights inside Russia. Whether or not you will be able to take action in the future is a complete unknown.
However, the owners of Russian IP rights should be aware that the prevalence of counterfeit goods originating from Russia is likely to increase in the months and years to come. Therefore, Australian businesses should be on heightened alert for counterfeit Russian goods entering the market, or being advertised on websites, in other countries in which they hold IP rights. Action can then be taken to prevent the importation and distribution of these goods in the destination countries.
On the face of it, the answer to this question may appear to be ‘no’. There seems to be little point in filing applications for patents or trade marks in the knowledge that, as a foreign applicant, there’s a chance that your rights may never be enforceable.
However, the reality is more complex than this. It has to be assumed that, at some point in the future, the war will be over and the sanctions will be lifted, meaning that doing business in Russia will once again be possible. If you have not filed applications for IP rights in Russia in the interim, it may no longer be possible to do so (particularly when it comes to patents and designs).
In addition, Russia is a “first to file” trade mark country, meaning that the first person to file a trade mark application for a particular mark is, on the face of it at least, the owner of the mark. If you have a growing brand with a potential market in Russia, it is conceivable that a Russian applicant could file an application for your brand, thereby creating some problems for you should it becomes possible to do business in Russia in the future.
In short, if Russia is an important market for your IP, you need to carefully consider whether you should still look at going through the motions of obtaining protection in that country. However, proceeding with a new filing would be done in the full knowledge that any Russian IP rights may never be enforceable.
If you have questions about how you can protect your Intellectual Property, get in touch with Kings Patent & Trademark Attorney’s.
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