Gowling WLG (International) Inc - Russia
Russia is continuing to structure its customs legislation in accordance with Eurasian Economic Union (EAEU) regulations and ongoing advances in technology. While most of the new rules are in line with previous regulations, there are two important changes that will significantly impact brand-protection strategies, reshaping the Russian customs recordal landscape for the better and helping brand owners to avoid potential pitfalls.
New timelines, deadlines and insurance agreement rules
The sources of these changes are:
- a new Federal Law on Customs Regulation in the Russian Federation and Amendment of Specific Regulations of the Russian Federation, published in August 2018; and
- a new decree by the Federal Customs Service (FCS) called About Approval of Administrative Regulations of the Federal Customs Service on the Provision of the State Service in Maintaining the Customs Register of Intellectual Property Items, which was approved by the Ministry of Justice and entered into force in June 2019.
With regard to timelines, the new law and FCS regulations now extend customs recordal and renewal requests to a maximum three-year term, up from two years previously. However, customs recordal terms still cannot exceed the term of:
- power of attorney granted to the representatives of the rights holder;
- trademark validity;
- the insurance agreement that covers the rights holder’s liability for unlawful suspension.
The legislation also establishes a new examination deadline for customs recordal applications. According to Paragraph 15 of the regulations, the total term for the consideration of customs recordal applications should not exceed three months. The FCS is still entitled to request additional information when considering an application – for example, it can ask for evidence of counterfeiting threats. Nevertheless, such requests, along with responses from rights holders, should meet this three-month standard.
The amount of the insurance agreement has also been raised from Rb300,000 ($4,600) to Rb500,000 ($7,800), according to Article 328 of the Federal Law. As a result, there has been a slight increase in insurance premiums. Despite this rise, Article 330 of the law and corresponding paragraphs of the regulations allow right holders to conclude the insurance agreement after a positive customs recordal decision has been made.
Official introduction of e-filing
Article 328 of the law and Paragraph 55 of the regulations will make it possible – at some future point – to file customs recordal applications electronically through the FCS’s official portal, which can then be signed electronically. Further communication with the FCS concerning these applications may also be conducted electronically. But this is in the offing for the short-term: the e-filing software is still being tested and is only expected to launch in 2020, occurring simultaneously with the launch of the Unified EAEU Customs IP Register.
Trademark assignment risks and other changes
The assignment of a trademark is now grounds for exclusion from the Customs IP Register, under Paragraph 74 of the FCS regulations. This means that once a trademark assignment has been recorded by the Russian Patent and Trademark Office, the FCS is entitled to exclude the respective trademark from the register. If a new trademark owner is interested in border protection measures, it will be necessary to file a new customs recordal application. However, the FCS has yet to elaborate on how this provision will work in practice or how the monitoring of the status of recorded trademarks will be conducted.
Further, rights holders must now promptly notify the FCS of any updates (eg, change of corporate name or address), their marks and branded goods. Failure to do so is formal grounds for the termination of a customs recordal, according to Article 332 of the new law.
In order to benefit from the new rules while avoiding possible complications, here are some important guidelines:
- Consider filing customs recordal applications or renewal requests for the maximum period of three years.
- Make sure to update customs recordal documents in order to reflect the new legislation and amend all insurance agreements.
- Carefully consider the consequences of a trademark assignment on customs recordals.
- Keep Customs IP Register information up to date.
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