FEDERATION TO THE WORLD TRADE ORGANIZATION 48 страница

- The Ministry of Culture of the Russian Federation and the subordinate Federal Service for Supervision of the observance of the legislation on Protection of Cultural Heritage;

- Ministry of Communication and Mass Communications of the Russian Federation and the subordinate Federal Service on Supervision in the Field of Communications, Information Technologies and Mass Communications;

- The Federal Customs Service;

- The Ministry of Industry and Trade of the Russian Federation;

- The Ministry of Health and Social Development of the Russian Federation and the subordinate Federal Service for Supervision of Protection of Consumers' Rights and Human Welfare and Federal Service for Supervision in the Sphere of Public Health and Social Development;

- The Ministry of Internal Affairs of the Russian Federation;

- The Ministry of Justice of the Russian Federation;

- The Office of the Public Prosecutor; and

- The Federal Antimonopoly Service.

1298. More detailed information on Federal bodies involved in the regulation and enforcement of intellectual property rights was provided in Table 35. The Courts of general jurisdiction and arbitration courts of the Russian Federation heard the cases on infringement of intellectual property rights in accordance with the relevant procedural laws.

3. ENFORCEMENT

General provisions

1299. The representative of the Russian Federation noted the importance of IPR protection to the creative and innovative communities of the Russian Federation and the economy of the Russian Federation, and shared with WTO Members the objective of eradicating piracy and counterfeiting in the Russian Federation. He stressed that the Government of the Russian Federation shared the goal of strengthening enforcement of intellectual property rights in Russia and globally. Further, he had stated that the legislation of the Russian Federation would fully comply with the WTO TRIPS Agreement upon accession to the WTO. The respective provisions of the legislation of the Russian Federation, which realized the requirements of the TRIPS Agreement on enforcement issues, were listed in Table 34.

Civil and Administrative Procedures and Remedies

1300. The representative of the Russian Federation stated that preliminary and final remedies currently available under the Civil Code (e.g., those set-out in Articles 1252, 1301, 1302, 1311, 1312, and 1515) included confirmation of rights, injunctive relief, prohibition of actions violating rights, compensation of damages caused to the right-holder, and statutory compensation. Regarding claims for damages and assessment of damages, civil law cases provided for the general principle of full recovery of damages. The amount of damage was calculated in accordance with the general norms of the Civil Code based on the prices of corresponding legitimate goods adjusted for actual damage and forgone profit of the right-holder. In accordance with existing legal practice, the amount of damage ordered by the court to be recovered by one infringer reached RUB 75 million. As for statutory compensation, it was initially defined by the plaintiff, who had the burden to prove the fact of damage caused without calculating the amount. It was further assessed by the court based on the nature of infringement, income received by the infringer and other relevant facts. The final decision on the amount of compensation rested with court.

1301. He added that civil legislation also provided the possibility of confiscation and destruction of counterfeit and pirated products as well as confiscation of materials and equipment used for their production. Articles 1252.5 and 1302 of the Civil Code provided for confiscation, by judicial decision, of counterfeit and pirated copies of works of art or phonograms, and materials and equipment used for reproducing counterfeit and pirated copies of such works. Confiscated counterfeit and pirated copies of works of art or phonograms were subject to destruction by a decision of the court, or were transferred, to holders of copyright and related rights upon request and decision of the court. According to Article 1252 of the Civil Code, illegally manufactured copies of integrated micro-circuits and/or of articles incorporating such integrated micro-circuits, and materials and equipment used for their manufacture could be confiscated, destroyed or transferred to the right-holder upon request as compensation for losses. Article 1515 of the Civil Code provided for the destruction, at the expenses of the infringer, of counterfeit goods, labels, and packaging of goods. In exceptional cases only, where introduction of the goods into commerce was necessary for "societal interests", the infringer was required to remove the illegal trademarks from the goods, labels and packaging.

1302. He further informed Members of the Working Party that according to judicial practice, the court would issue a decision on confiscation and destruction when the right-holder had not requested the goods to be transferred to him/her. Should the court not order confiscation of illegal goods in civil proceedings, the right-holder could appeal.

1303. The representative of the Russian Federation confirmed that the Russian Federation would ensure that civil procedures against violators of intellectual property rights would provide an effective method of protection for rights holders. The Working Party took note of this commitment.

1304. Some Members continued to raise concerns about the practice in the Russian Federation of leasing or otherwise using machinery and other implements owned by third parties. In such cases, courts had not ordered confiscation and destruction of items used to commit the infringing activity. These items were released and could be used to commit further acts of piracy and counterfeiting. These Members requested that the Russian Federation provide for confiscation and destruction of machinery and other implements even if third parties owned these items.

1305. In response to Members' concerns, the representative of the Russian Federation informed Members that the optical disc licensing regime of the Russian Federation had been amended to require as a condition to obtain or extend a licence to produce optical media bearing content protected by copyright or related rights that the applicant own the equipment used in the plant to produce optical media. Violation of this condition would be grounds to deny or suspend, and then immediately seek revocation by a court of a licence.

1306. Regarding provisional measures under Articles 72, and 90 through 100 of the Arbitration Procedure Code, the representative of the Russian Federation informed Members of the Working Party that the arbitration court could take a decision on application of provisional measures for conservation of evidence, conservation of the status quo between the parties, prevention of irreparable damage to the right-holder, and preservation of assets for fulfilment of a future court decision. Provisional measures could include: prohibition of infringing actions, preservation of assets, including bank accounts, monetary funds and other property, seizure of documents and other evidence. Such provisional measures could be sought during a trial as well as before the filing of a claim in cases where any delay would likely cause irreparable harm to the right-holder or there was a demonstrable risk that evidence could be destroyed. In addition, the court had the authority to issue an order for a preliminary injunction based on the petition of the plaintiff, without participation of the parties. Such measures were to be aimed at securing the claim. In accordance with Article 93 of Arbitration Procedure Code, the arbitration court must reach a decision on the application for provisional measures not later than the next day after the right-holder filed a petition with the court, and did so without notifying the parties. Provisions stipulating similar measures were also provided in Article 64 of the Civil Procedure Code (Federal Law No. 138-FZ of 14 November 2002). In his view, these provisions fully complied with the requirements of Article 50 of the WTO TRIPS Agreement.

1307. With regard to administrative procedures and remedies, the representative of the Russian Federation stated that Articles 7.12, 7.28 and 14.10 of the Code of Administrative Offences established administrative liability for violation of copyrights and related rights, rights regarding inventions and industrial designs, trademarks, service marks and indications of origin. Article 13.14 of the Code of Administrative Offences also provided for administrative liability (in form of a fine) for offences in the field of information, including disclosure of information by persons having received access to such information in connection with performance of a service or professional duties. In addition to fines of up to RUB 40,000 (i.e., about 1,300 USD), administrative sanctions in case of copyright infringements included obligatory confiscation of counterfeit and pirated products, materials and equipment used in their production, and other instruments used in committing the administrative offence. In accordance with Article 32.4 of the Code, confiscated products, materials, equipment and instruments were subject to destruction or, at the request of the right-holder, transferred to such right-holder.

1308. Members noted that cases of infringement through retail outlets in the Russian Federation were increasingly handled under administrative authority, resulting in very small fines or none at all. While pirate products were generally confiscated, shop operators were normally not the owners of the product and the latter were seldom caught and fined. In addition, the Code on Administrative Offences of the Russian Federation effectively limited the time period for the investigation of copyright infringements to several days, even when a longer time was necessary to investigate such cases. In their view, the Code should provide for at least a one-month period for the investigation of copyright infringing cases, as it does in other cases of administrative misdemeanours. Members also stressed the need for administrative authorities to refer more cases, including those involving repeat offenders and wilful piracy and counterfeiting, to the appropriate authorities for initiation of criminal actions.

1309. In response the representative of the Russian Federation stated that the Government of the Russian Federation had adopted Resolution No. 185 of 27 March 2007 "On Amendment to the Rules of Selling of Particular Types of Goods", which prohibited the selling of copies of audio-visual works, phonograms, computer programs and data bases from stalls/kiosks. This resolution also established requirements for the information that the seller was to provide to the consumer. This included information on the producer of the goods, on technical characteristics of the media and on the respective right-holder of copyright or related rights.

1310. In response to questions concerning appeal processes in intellectual property matters, the representative of the Russian Federation explained that Russian legislation provided for enforcement of intellectual property rights through both judicial and administrative procedures. Pursuant to Article 1248 of the Civil Code, rights in copyright and related rights and commercial secrets were enforced only by the courts. For other intellectual property rights, the Chamber of Patent Disputes of Rospatent also conducted an administrative dispute procedure in cases connected with submission and consideration of applications for the issuance of patents for inventions, utility models, industrial designs, achievements of breeding, trademarks, service marks, and designations of places of origin of goods, involving State Registration of these results of intellectual activity and means of individualization, and issuance of the corresponding right-establishing documents. These cases involved contesting the grant or denial of registration for these results and means of legal protection or with the termination of such protection. These administrative decisions could be appealed to a court. The procedure for lodging objections and applications to the Chamber of Patent Disputes and the procedure for their consideration were determined by the Order of Rospatent No. 56 of 22 April 2003 "On the Rules of Filing Objections and Applications and the Consideration Thereof by the Chamber of Patent Disputes" (as amended on 11 December 2003). Pursuant to this Order, the Chamber of Patent Dispute performed the following functions:

- Considered objections to refusals to issue a patent for an invention, industrial design or certificate for utility model or to accept an application for trademark, service mark or appellation of origin/indication of place of origin based on the results of a formal examination;

- Considered objections to refusals to issue a patent for an invention, industrial design or to register a trademark, service mark, designation of place of origin of goods and/or to grant the right to use a designation of place of origin of goods, based on a merits examination of applications and of designations applied for; and

- Considered objections from individuals and legal entities against issuance of patents for inventions, industrial designs and certificates for utility models in violation of existing certificates for inventions and certificates for industrial designs of Russian authors, and against registration of trademarks, service marks, designation of place of origin of goods, and issued certificate to use designation of place of origin of goods.

Details of procedures for carrying out these functions were also set-out in Order No. 56.

1311. He further added that lodging an application to the Chamber was subject to payment of a fee, in accordance with the Article 1249 of the Civil Code. The rates of such a fee were established by Government Resolution No. 793 of 12 August 1993 (as last amended on 26 January 2007).

1312. The representative of the Russian Federation confirmed that the Russian Federation would act effectively against acts of infringements of intellectual property rights, including by expeditious action, on the basis of complaints lodged by right-holders and otherwise, with the objective of eliminating such acts in the Russian Federation. He also confirmed that the Russian Federation would also pursue effective and improved application of legislation concerning the infringement of intellectual property rights, including the imposition of penalties that take into account the high degree of public harm from such infringement, the concrete circumstances of the crime and the objective of preventing future crimes. The Working Party took note of these commitments.

Border Measures

1313. The representative of the Russian Federation stated that as of 1 July 2010, border measures in the Russian Federation were applied pursuant to Chapter 46 of the CU Customs Code (Articles 328 to 334) and Section 42 of the Federal Law on Customs Regulation (No. 311-FZ of 27 November 2010). Consistent with the procedures set-out in Chapter 46, the customs authorities of the Russian Federation (i.e., the Federal Customs Service of the Russian Federation (FCS)) were authorised to take action to protect intellectual property rights that were included in a customs register maintained by the FCS and in the unified customs register of intellectual property rights of the CU Parties. In addition, the CU Customs Code provided that, in accordance with the national legislation of the Russian Federation, the Russian customs authorities were authorised to enforce intellectual property rights with respect to intellectual property not included in those customs registers. In this regard, Article 305 of the Federal Law on Customs Regulation authorised the FCS to take action without an application from the right-holder (i.e., pursuant to ex officio authority) in accordance with Section 42 of that Law.

1314. The representative of the Russian Federation explained that intellectual property rights could be included in the customs register of the Russian Federation based on an application filed by the right-holder in accordance with the procedure and under the conditions established in the national legislation of the Russian Federation. In order to be included in the customs register of the Russian Federation, the CU Customs Code required that the intellectual property right had to be protected in the Russian Federation.

1315. He explained that, in accordance with procedures established by the customs authorities of the Russian Federation, copyrights, related rights, trademarks, service marks and names of places of origin of goods could be included in the customs register of intellectual property. The applicant was required to submit an application to the customs authorities to have an intellectual property right included on the national register and customs authorities had 30 days to decide on including the intellectual property right on the register. The representative of the Russian Federation further explained that while no fee was charged for including an intellectual property right in the register of the Russian Federation, the right-holder was required to provide a security or contract of insurance to cover potential liability for damages to the declarant, owner, recipient of the goods or other persons in connection with suspending the release of goods suspected of violating intellectual property rights in the national register. The amount of the security or the insurance must be at least RUB 300,000 (10,000 USD) and if the customs authorities did not receive confirmation of the security or insurance bond within the 30 day period during which the authorities were deciding on the application, customs authorities were authorised to refuse the application to suspend entry of goods. He also noted that the Federal Law on Customs Regulation included grounds for removal of items from the register, i.e., removal at the request of the right-holder or his representative; for failure to provide the required security or insurance contract; termination of the protection of intellectual property right; for failure to apply for enforcement of the intellectual property right (court, office of Public Prosecutor, Ministry of Internal Affairs, customs authorities) for the protection of his/her rights in accordance with civil, administrative, and criminal legislation, during the period when release of the goods has been suspended, to the competent authority for enforcement of intellectual property rights in the Russian Federation; and for submitting false information in the application for measures to suspend the release of goods.

1316. The representative of the Russian Federation explained that the term of protection of an intellectual property right included on the national register was established in the national law of each CU Party, taking into account the term specified by the right-holder in its application for registration, but the term of protection cold not exceed two years from the date the intellectual property right was included in the register. The right-holder could apply to extend the term of protection an unlimited number of times, but each extension could not exceed two years and could not exceed the term of protection for the intellectual property right in the CU Party.

1317. With regard to the Customs Union unified customs register of intellectual property rights, the representative of the Russian Federation informed Members that the conditions for including intellectual property in the unified register and the procedure for maintaining the unified customs register were set-out in the Agreement on the Unified Customs Union IPR Register for Member States of the Customs Union of 21 May 2010. In the case of an intellectual property right included in the Customs Union Unified Register, the minimum security/guarantee was 10,000 EUR. The term of registration was similar to that for the national customs register of the Russian Federation, namely, the term of protection could be up to two years from the date the intellectual property right was included in the register. The right-holder could apply to extend the term of protection for an unlimited number of times, but each extension could not exceed two years and could not exceed the term of protection for the intellectual property right in the CU Parties.

1318. Under the CU Customs Code, for goods containing intellectual property which were included in the customs register of the Russian Federation or the unified CU register of intellectual property, if there were any signs of a violation of intellectual property rights, customs authorities were authorised to suspend the release of such goods for ten business days. At the request of the right-holder or his representative, the customs authority could extend the term of suspension by up to ten business days, provided that the right-holder or his representative applied to the authorised authorities for a decision on protection of rights of the right-holder in accordance with the national legislation of the Russian Federation. Decisions to suspend the release of goods and to extend the term of suspension had to be in writing. The representative of the Russian Federation noted that Chapter 46 included provisions regarding notification of the declarant and the right-holder and information to be provided to these persons or their representatives, and requirements that the declarant and right-holder, or their representatives treat such information as confidential and not subject to disclosure or transfer to third parties and other authorities, except as prescribed in the national law of a CU Party. In addition, with the written permission of the customs authority, the right-holder, declarant or their representatives could, subject to customs control, take samples and specimens of the relevant goods and inspect, take photos of or otherwise identify the goods and undertake investigations of these goods.

1319. When the term of the suspension expired, the goods were released under normal customs procedures unless documents were submitted to the customs authorities confirming the seizure, confiscation, or detention of the goods, or, in accordance with the national law of the CU Party that the goods were otherwise not subject to release.

1320. The representative of the Russian Federation also explained that the right-holder was, in accordance with national law, liable for damage caused to the declarant, owner, recipient of the goods containing intellectual property, resulting from suspending the release of the goods unless there was a violation of rights of the right-holder. He explained that the determination of a violation could be through administrative or judicial procedures.

1321. Answering the question from a Member in respect of cases where goods being detained by the customs body and considered to be counterfeit had been abandoned by the importer, the representative of the Russian Federation explained that in accordance with Article 1515 of the Civil Code of the Russian Federation in such cases the goods, except for cases of societal interest, were subject to destruction upon request of the right-holder at the expense of the importer. If the importer or the owner of the goods were not available, then, in accordance with the Article 190 of the Federal Law "On Customs Regulation" in the Russian Federation, the destruction was to take place at the expense of the Federal budget.

1322. Pursuant to section 306 of the Federal Law on Customs Regulation right-holders of trademarks, copyright and related rights, and designations of place of origin of goods (or his/her representative), who had sufficient grounds to believe that his/her rights could be violated, could submit an application requesting the FCS to suspend the release of suspected goods that were under customs control. The application had to contain information on the right-holder (and if filed by a representative - also information on such representative); the IPR object, including documents establishing that the applicant had rights in the intellectual property; the goods that, in his/her opinion, were counterfeit in sufficient detail to permit identification of the suspect goods; and the term of protection under the regulation that he/she believed was needed. Samples of the suspect goods could be included with the application and could serve as confirmation of the alleged violation. The presentation of the application must be accompanied by documents confirming an obligation (in written form) for compensation of possible property damage to the importer, owner, or recipient of the goods if the goods were not found to be counterfeited or pirated. The application must also be accompanied by a document guaranteeing fulfilment of the named obligation or a by contract of insurance of the liability from the causation of damage. In all cases, the required amount of the guarantee must be not less than RUB 300,000 (10,000 USD). The most widespread form of meeting this obligation was a bank guarantee, i.e., a contract between a bank and an applicant. In accordance with that contract, the bank guaranteed payments to compensate for property damage. The sum of the real expenses of the applicant for signing such contract would amount to not higher than 3 to 7 per cent of the above-mentioned figure (not more than approximately 700 USD).

1323. He further confirmed that the RUB 300,000 insurance/bank guarantee was required for each application, but that an application could cover unlimited trademarks and objects of copyright, and a guarantee was not required for each object of copyright or trade mark or for each enforcement action taken relating to the object of intellectual property. No payment was required for the submission and examination of the application and the implementation by the customs authorities of border measures. The FCS had the right, if necessary, to check the information provided in the application. Applications were considered within a month from the date they were received by the FCS. Objects of intellectual property rights in respect of which the FCS had decided to take measures were entered, free of charge, into the customs register of the Russian Federation within three days from the date of the FCS decision. Information concerning the decision on an application and insertion of objects of intellectual property rights into the customs register of the Russian Federation was to be sent by a FCS letter to every customs body within one day after the decision had been made.

1324. A Member of the Working Party expressed the concern that, considering the risk posed by growing number of IPR infringements other than copyright and trademark, these provisions should also be extended to other types of IPR infringements, such as infringements of designs, patents and plant varieties. In response the representative of the Russian Federation noted that Article 51 of the WTO TRIPS Agreement did not require application of border measures in respect of enforcement of intellectual property rights other than copyright and trademarks.

1325. The representative of the Russian Federation also confirmed that the Russian Federation would ensure that the guarantee requested from right-holders to lodge a registration request with Customs authorities would not constitute a dissuasive element to the use of this instrument, as required by Article 53 of the WTO TRIPS Agreement. The Working Party took note of this commitment.

1326. With regard to enforcement of intellectual property rights that were not included in the national register or the Customs Union unified register, the representative of the Russian Federation explained that, if during the performance of customs formalities and customs control, customs authorities discovered goods potentially violating intellectual property rights and in case of available information about the right-holder in the Russian Federation, the clearance of such goods could be suspended for up to seven working days. The decision to suspend the customs clearance of goods, the reasons for such a decision, and the terms of the suspension had to be notified to the importer/exporter and to the right-holder no later than one day after the decision had been taken. The right-holder had the right to take, under customs control, samples, specimens, pictures or otherwise record the goods whose release had been suspended. The customs authorities could prolong the term of suspension of customs clearance for up to ten working days upon request of the right-holder, provided the right-holder (or his/her representative) had submitted an application to the Customs authorities. The decisions to suspend customs clearance were subject to revocation on the day following the expiry of the term of suspension, unless a decision to withdraw, seize, or confiscate the goods had been taken before the date of expiry. Revocation decisions were taken by the chief of the custom office and were notified within three days, along with a justification, to the higher customs body. The decisions could be cancelled before the initial term upon request of the right-holder.

1327. The representative of the Russian Federation added that Russian legislation also provided customs authorities the right to apply for urgent measures on suppression of IPR violations even if the objects of Intellectual Property were not included in the national customs register or the Customs Union unified register. In addition to the provisions of the Federal Law "On Customs Regulation", the Code of Administrative Offences had introduced administrative liability for infringements of intellectual property rights (Article 7.12 "Infringements of Copyright and Related Rights, Inventive and Patent Rights" and Article 14.10 "Illegal Use of a Trademark"), that while not specifically directed at border enforcement of intellectual property rights, covered, inter alia, intellectual property infringements found in connection with import-export operations and vested the customs authorities with the powers to exercise administrative prosecution where infringements were detected.