Russian Supreme Court Upholds Controversial Decision in TRISOLEN Case

On May 15, 2017, the Russian Supreme Court upheld one of the recent confusing Russian IP Court decisions that seem to collide with Russian legislation regulating what is and what is not a trademark infringement as well as with established practice.

The case in question concerns importing goods into Russia bearing the TRISOLEN trademark manufactured and sold by German company LEUNA EUROKKOMERZ GmbH, the owner of the trademark in Germany, which is similar to the ТРИЗОЛЕН (TRIZOLEN in Latin) trademark, registered in Russia by Russian company MVT Trade LLC. In line with the existing case law, the first instance and appellate courts issued decisions stating that importing TRISOLEN branded goods constituted trademark infringement, but the IP Court cancelled the decisions, declaring that goods imported to Russia manufactured in another country and bearing a trademark registered in that country of origin, despite bearing a mark highly similar to a trademark registered in Russia, cannot be considered counterfeit according to the Code of Administrative Offences. According to the IP Court ruling, only goods that infringe a trademark in their country of origin can be prohibited from circulating in Russia.

The Supreme Court upheld this decision and rejected the appeal filed by MVT Trade LLC on the grounds that Russian company’s arguments did not prove the alleged breach of procedural or material laws.

The Supreme Court decision is likely to limit the scope of trademark rights protection in Russia, because Russian customs and police authorities, who have traditionally played an important role in stopping such shipments, will be unlikely to take action in such cases in the future.

A trademark infringement can incur civil, administrative or criminal liability under Russian legislation. Police and Customs, which could initiate administrative or criminal proceedings, are now unlikely to act, so the only remaining IPR protection route for trademark holders is a civil action, particularly because the Russian Civil Code fully transposes the Paris Convention of 1883, including the territorial principle of exclusive rights (Article 1346 of the Civil Code).

Given that in civil actions the burden of proof, suppression of unlawful acts and participation in court proceedings rests solely with the rights holder, and that, according to existing case law, courts are generally reluctant to grant preliminary injunctions, protecting IP rights in similar cases is likely to become even more complex for trademark holders in Russia.

By: Julia Zhevid and Tatyana Kulikova

For more information, please contact Julia Zhevid or Tatyana Kulikova at our Russia office.