History of the regulation of parallel imports in Russia
Regulation of parallel imports was initially aimed at protecting the interests of rightholders and for a long time remained an important tool for intellectual property protection. However, recently its role changed significantly.After some foreign companies started to stop direct deliveries of their products to the Russian market through their subsidiaries and official distributors, there was a threat of shortages of a number of goods. This was due to the fact that the goods were no longer supplied by official importers but third parties were still not allowed to import them without the consent of the rightholder.
In this regard, Federal Law
The List has been amended many times. As a rule, it includes trademarks belonging to companies that have left the Russian market, but there are also exceptions.
The List appliesLetter of FTS of Russia
Prospects for the development of parallel imports in Russia
At the St Petersburg International Economic Forum in 2024, it was announced that the existing approach to differentiated regulation of parallel imports would be extended to 2025.At the same time, a decision was made to extend such approach to the use of inventions, utility models, industrial designs without the consent of the patentee with notification of the patentee as soon as possible and with the payment of commensurate compensation. On 27 June 2024, Rospatent published the relevant information and prepared application forms.
This requiresClause 5 of article 1229 of the Civil Code of the Russian Federation technical amendments to the Civil Code of the Russian Federation, since restrictions on exclusive rights to the results of intellectual activity and means of individualisation can only be established by the Civil Code.
Recent trends in court practice
Until 2022, courts were inclined to recogniseDecision of the Arbitrazh Court of the City of Moscow dated 18 December 2018 in caseMore recently, courts have taken a differentiated approach to the application of parallel import rules and have curbed abuses by importers:
- parallel import rules are not allowed to be applied for goods not on the List. For example, in one case the Thirteenth Arbitrazh Court of Appeal, rejecting the respondent’s arguments that parallel importation was allowed, statedResolution of the Thirteenth Arbitrazh Court of Appeal
No. 13AP-11586/2022 ,13AP-11588/2022 of 9 June 2022 in caseNo. A56-109836/2021 (Decision of the Intellectual Property Rights CourtNo. C01-1527/2022 of 12 October 2022 left unchanged). that Robocar Poli toys were not named in the List. In another case, the Arbitrazh Court of the Primorsky Territory, analysing the List, foundDecision of the Arbitrazh Court of the Primorsky Territory dated 7 August 2023 in caseNo. A51-1583/2023 (the Decision of the Fifth Arbitrazh Court of AppealNo. 05AP-5606/2023 dated 11 October 2023 was left unchanged) that the parallel import of goods marked with the trademark “Holika Holika” was not permitted. - the rules on parallel imports do not apply retroactively. The IP Court rejected“On goods (groups of goods) in respect of which certain provisions of the Civil Code of the Russian Federation on the protection of exclusive rights to the results of intellectual activity expressed in such goods and the means of individualisation with which such goods are labelled cannot be applied” the respondent’s reference to Government Decree No. 506 of 29 March 2022, as at the time of the offence it was not yet in force and did not containResolution of the Intellectual Property Rights Court
No. C01-796/2022 of 14 June 2022 in caseNo. A52-5048/2021 (Decision of the Supreme Court of the Russian FederationNo. 307-ES22-18224 of 27 September 2022 left unchanged) a retroactive clause. - in order to apply the rules on parallel imports, it is necessary to confirm the originality of the goods. In several cases, the courts have indicatedDecision of the Intellectual Rights Court
No. S01-2414/2022 of 1 February 2023 in caseNo. A33-14168/2022 , Decision of the Intellectual Rights CourtNo. S01-2407/2022 of 25 January 2023 in caseNo. A51-4937/2022 that the burden of proving the originality of goods lies with the importers. For this purpose, the importer must possess the entire list of documents confirming the legitimacy of the application of trademarks on imported goods, as well as the legal introduction of goods into civil circulation in the territory of third countries.
Administrative liability practice
In contrast to situations with the import of counterfeit goods (fake and imitation products), in case of parallel importation, the declarant is not held administratively liable. The only exceptionResolutionCivil liability practice
Resolution No. 10 of the Plenum of the Supreme Court (“SC”) of 23 April 2019 indicates that laws do not limit the ways in which a trademark may be used to the mere manufacture of goods and placement of such trademark on them. The exclusive right coversPoint 156, among others, the distribution (including offer for sale) and import into the territory of the Russian Federation, storage or transportation for the purpose of bringing goods (with labels, packaging, and documentation) bearing a trademark into circulation in the territory of the Russian Federation.In this connection, the import of goods (along with other actions aimed at placing goods into circulation) is viewed as one of the ways of using a trademark and is only permitted with the rightholder’s consent, which entitles the rightholder to seek protection of their rights in court.
Special attention is to be paid to the question of whether the rights and legitimate interests of the rightholder are infringed by the purchase and resale of goods, for example, by a reseller. In this regard, one should take into account the principle of exhaustion of the exclusive right providing that the use of a trademark by other persons in respect of goods that have been placed into circulation in the Russian Federation directly by or with the consent of the rightholder does not constituteRussian Civil Code, article 1487 an infringement of the exclusive right to the trademark. The SC Plenum specifically statesResolution No. 10 of the SC Plenum of 23 April 2019, point 156(4) that such acts as the purchase of goods bearing a trademark, regardless of the purpose of the purchase, and the storage or transportation of such goods without the purpose of placing them into circulation in the Russian Federation, do not infringe on the rightholder’s exclusive right.
In practice, courts assumeResolution
The court practice trend suggestsResolution
However, the very fact of the existence of such cases suggests that we cannot completely rule out the risk that a person engaged in the retail sale of goods may have to spend time and resources on litigation and collecting necessary evidence (expert opinions on the genuineness of the goods, documents evidencing that they were lawfully purchased in the countries where they had been placed into circulation with the rightholder’s consent, etc.).
A person engaged in the retail sale of goods may however suffer indirectly as a result of the rightholder’s actions to protect their rights, for example, if the goods are seized to secure the rightholder’s civil claim against the importer (which is highly unlikely in practice).