Important update on evidence
On 12 August 2020 a very significant ruling was handed down by the Moscow Arbitration Court, which might make it easier for rights holders to record their trade marks on the Customs register.
Like many countries, Russia operates a system under which rights holders may record their marks with Customs. Customs will be on the lookout for any unauthorised importations of goods bearing such marks. For many rights holders this is an excellent first line of defence against counterfeits.
For the last few years, however, the availability of a Customs recordal has been severely restricted because the Federal Customs Service (FCS) have required rights holders to prove that there have been unauthorised importations as a pre-requisite to recording marks on to the Customs Register. But the best way to obtain such proof is by a Customs detention… and the likelihood of a Customs detention without marks being recorded with Customs is extremely slim.
A company called LLC Trivium-XXI applied to record their marks on to the Customs register. The FCS refused the application because it was not accompanied by any evidence showing unauthorised importations of goods bearing the marks.
Trivium filed a claim against the FCS challenging their requirement for evidence of unauthorised importations. The application was initially rejected by the Arbitration Court of Moscow Area, but appealed to the Supreme Court of Russia (court ruling of 22 Jan 2020). The Supreme Court decided that the FCS requirements were not valid under the law, held in favour of Trivium and sent the case back to the Arbitration Court for a new hearing.
Finally, on 12 August, the Arbitration Court satisfied the claim and deemed the FCS refusal to record Trivium’s mark on the Customs register was illegal. This decision is very significant, as it is likely that FCS will stop requiring such evidence of unauthorised importations in future thus making it much simpler for rights holders to record.
Court ruling can be found here.
Although this decision is specific only to this particular case of LLC "Trivium-XXI" and only obliges the FCS to eliminate the violations of Trivium’s rights in connection with their application, the case should have a broader influence on the FCS and lead to changes to existing practice. However, only time will tell whether or not this is the case, or whether instead it will take further disaffected applicants to resort to the courts to effect a change in FCS practice.