According to Chapter 57 of the Federal law No. 289-FZ dated 03.08.2018 “On Customs Regulation in the Russian Federation and on amending certain legislative acts of the Russian Federation” (Law on customs regulation) a rightholder is entitled to file to the Customs Service an application for including their IP objects to the Customs Register seeking rights protection.
If an object is included in the Customs Register the Russian customs authorities preclude unauthorized import/export. As a result, counterfeits or parallel imported goods are not brought to the Russian market and no damage to the rightholder is caused.
Certain documentation is needed to include an IP object to the Customs Register. The Russian Customs Service always demanded a sample of a counterfeit to be provided to include an IP object to the Customs Register.
The Russian Customs Service’s demand was grounded on the interpretation of art. 328 of the Law on customs regulation and Administrative Regulations, that require providing the Customs Service with the information on counterfeit goods. Russian courts have supported the Customs Service’s position.
However, on 20.01.2020 the Russian Supreme Court passed the Ruling on the case No. A40-241863/2018 stated that such interpretation of the provision is incorrect whereas goals of the measures aimed at right protection are different, and “makes no sense the maintenance of TROIS as a means of facilitating the identification and prompt suppression of offenses and the protection of rightholders”.
The legal position of the Russian Supreme Court will positively affect the protection of IP rights since the procedure for identifying and acquiring counterfeits often complicated the process of including an object to the Customs Register. Given the new trend, we expect that including of IP objects to the Customs Register will become easier.
The opposite situation may be found in Kazakhstan, where the requirements of the customs authorities have been tightened since 2019. The confirmation of the fact of counterfeit goods movement across the EAEU is mandatory, otherwise, the including of an IP object to the Customs register will be refused (Art. 461 of the Code of the Republic of Kazakhstan No. 123-VI dated 12.26.2017 “On Customs Regulation in the Republic of Kazakhstan”).