The Russian national system of protection of intellectual property rights complies with the basic international standards adopted in this field, including the provisions of the WTO Agreement on TRIPs.

Article 44, paragraph 1 of the Constitution of the Russian Federation guaranteed freedom of literary, artistic, scientific, technical and other types of creative and educational activity and provided their legal protection. The whole system of the Russian legislation in force supports the implementation of that constitutional right. A number of international agreements signed by the Russian Federation constitute an integral part of this system.

The contemporary Russian legislation in the field of intellectual property is conveniently integrated in a single source - Part IV of the Civil Code. The laws on individual subject matters were included in Part IV in 2008 and since then were revised several times, the last one being in July 2016.

In addition to the Civil Code there are laws which regulate various aspects of intellectual property, such as the Criminal Code, the Code on Administrative Offences, the Law on Customs Regulation, the Law on Protection of Competition.

Patent

Chapter 72 (Patent Law) of Part IV of the Civil Code regulates legal protection of inventions, utility models, and industrial designs.

Inventions, utility models, and industrial designs are protected through their registration with the State Register of Inventions, State Register of Utility Models, or States Register of Industrial Designs and sequential granting an invention patent, utility model patent, or industrial design patent. For invention, utility models, and industrial designs a corresponding application should be filed with the Russian Patent and Trademark Office (Rospatent).

For inventions, utility models and industrial designs, the registration process consists of formal examination which is conducted to determine whether the application contains all the documents mentioned in the application and whether the documents comply with the established requirements, and substantive examination which includes determination of compliance of the claimed subject matter with the conditions of patentability (novelty, inventive step, industrial applicability – for inventions; novelty and industrial applicability – for utility models; novelty and originality – for industrial designs).

Utility model and industrial design applications are publicly available only after publication of the patent grant, while an invention application are published by Rospatent upon the expiry of 18 months from the filing date. After publication of an invention application any person can inspect the application file and can submit to Rospatent his observations on patentability of the claimed invention which will be accounted by the examiner during substantive examination of the invention application.

During the whole term of protection the granted patent can be contested by any person and invalidated, in particular, on the ground that the invention (utility model) does not comply with the patentability requirements.

A patent for an invention is valid for 20 years from the filing date. The term of validity of an invention patent relating to a drug, pesticide or agrochemical, for the use of which an authorization is required, may be extended by the Patent Office at the request of the patent owner for a period not exceeding 5 years. In case the patent term extension is granted, an additional patent will be issued with the claims characterizing the product for which a marketing authorization is provided. The term of validity of a utility model patent is 10 years from the filing date (for Patent Cooperation Treaty cases, it is from the international filing date).

An initial term of validity of an industrial design patent is 5 years from the date when the application was filed with Rospatent. This term may be extended up to 25 years by several 5-year periods. In patent infringement cases, doctrine of equivalence is applied only in respect of inventions, but not utility models.

Trademark

Paragraph 1 of Chapter 76 (Rights to Means of Individualization of Legal Persons, Goods, Works, Services, and Enterprises) of Part IV of the Civil Code regulates legal protection of trademarks and service marks, including collective marks and well-known marks.

Trademark protection (exclusive rights) in Russia is obtained through registration. No requirements of actual or intended use of the trademark exist in Russia as far as registration is concerned. First-to-file rather than first-to-use principle is provided by the Russian trademark system.

Trademark may be registered in the name of a legal entity or an entrepreneur.

Collective mark may be registered in the name of an association.

Words, figurative, three-dimension or other signs or their combinations that capable of individualizing goods and services of legal entities and individual entrepreneurs may be registered as trademarks or service marks. A trademark may be registered in any color or combination of colors.

In order to register a trademark in Russia, a trademark application has to be filed with Rospatent. Rospatent applies the International (Nice) Classification of Goods and Services.

The examination of an application conducted by Rospatent includes the formal examination and the substantive examination of a sign. The formal examination is conducted within a month after filing the application.

Rospatent publishes all filed trademark applications in its Official Bulletin. After the publication any person may submit to Rospatent his observations on registrability of the mark which will be considered by the examiner during examination of the application.

Registered trademark may be contested by interested persons and invalidated in full or in part (i.e. with respect to some goods or services for which it was registered). Invalidation action may be filed to Rospatent by an interested person within five years after the trademark registration, if the action is based on similarity to that person’s trademark, or during the whole term of trademark validity, if the action is based on some other grounds.

Trademark registration is valid within 10 years from the filing date and can be renewed an infinite number of further 10-year periods. At the request of an interested person, the protection of a trademark may be early terminated in respect of all or part of the goods in connection with a continuous non-use of a trademark for any 3 years after its state registration.

Copyright & Related Rights

Chapter 70 (Copyright Law) and Chapter 71 (Related Rights) of Part IV of the Civil Code regulate legal protection of the objects of copyright and related rights respectively.

The Civil Code provides protection for the subject matters covered by both copyrights (works of science, literature and art, including computer programs and databases) and related rights (performances, phonograms, broadcasts by on-air or cable broadcasting networks, database contents and works of science, literature and art first published after their falling into the public domain).

It is not required to register a work or to complete any other formalities for a copyright in such a work to arise, to be exercised and protected. The copyright owner shall enjoy economic (exclusive) rights to the work. Those rights include: rights to reproduction, distribution, and public demonstration or performance of a work, to import of the original or copies of the work; rental right; to broadcast of a work by radio, television, or by cable; to translation or another revision of a work; to realization in practice of an architectural, design, urban planning or landscape project; and right to communication of a work to the public.

The grant on the territory of the Russian Federation of protection for objects of related rights in accordance with the international treaties of the Russian Federation shall be conducted with respect to performances, phonograms, communication of transmissions of organizations of over-the air or cable broadcasting. The Russian Federation is a party to the Berne Convention, the Universal Copyright Convention, the WIPO Copyright Treaty, and the WIPO Performances and Phonograms Treaty. The Russian Federation is also a party to the Rome Convention, Phonograms Convention, and Satellites Convention.

IP Rights Enforcement

Infringement of IP rights can give rise to civil, criminal and administrative liability.

Administrative liability is a form of a public liability for an administrative offence (less severe than criminal liability). If the defendant is found guilty under the administrative procedure, a fine is usually imposed and seized products may be confiscated for the further destruction. Criminal proceedings are initiated if the IP infringement is intentional and causes significant damage.

The law provides an option for patent, trademark, copyright and related rights owners to claim monetary compensation instead of damages: ( 1 ) in the amount from 10,000 rubles to 5,000,000 rubles determined at the discretion of the court proceeding from the nature of the infringement; (2) in the double amount of the value of copies of the copyrighted works or phonograms, or goods on which the trademark was illegally placed or in the double amount of the value of the rights for the use of the corresponding IP subject-matter (including patent) proceeding from the price that in comparable circumstances is usually charged for the lawful use thereof.

Provided by Mr. Nikolay Bogdanov, Partner and Mr. Vladimir Biriulin, Partner at Gorodissky & Partners in Russia.