Business cooperation between Russia and China is growing rapidly. According to the open sources as of 2023, the trade between the countries increased by 26.3 % compared to 2022 and reached $240,11 billion.

An important factor of successful trade for the Chinese companies conducting import and sales of goods in Russia is the protection of their intellectual property rights (IPRs), including rights to trademarks, patents for inventions, designs, utility models and copyrights. Unauthorized use of the IP assets would constitute infringement and may entail civil, administrative or criminal liability under Russian law.

This article provides practical advices for enforcing various types of intellectual property in Russia for Chinese companies' reference.

I. Trademark Rights Enforcement

According to the Report of the Russian Federal Service for Intellectual Property (Rospatent), in 2023, Chinese companies filed 6,226 trademark applications covering Russia, a record-breaking number of applications by country per year. In the same year, 3,969 trademarks were registered in Russia in the name of the Chinese companies.

Registered trademarks enjoy legal protection in Russia: trademark owners may protect their rights at court within civil procedure, or they may apply to the authorities protecting public interests, such as customs or police, for initiation of administrative or criminal proceedings against the infringers.

Civil action can be initiated against unauthorized use of trademarks with regard to counterfeit or parallel imported (original) goods. In fact, civil action now remains the only judicial remedy to pursue parallel importation.

The civil action involving trademark infringement starts with the civil lawsuit filed by the right owner. Within civil action, it is possible to obtain such remedies as: (i) injunctive relief (preliminary and permanent); (ii) damages or monetary compensation; (iii) recognition of the trademark rights; (iv) destruction of counterfeit goods; (v) publication of the judgment.

As the damages caused to the trademark owner are obviously burdensome to prove, and Russian courts are traditionally meticulous considering evidence of damages, the Civil Code introduced possibility of monetary compensations. The compensation amount may constitute up to RUR 5,000,000 (about CNY 420,000), or double price of counterfeit goods, or double amount of the right to use the trademark, and the amount of these compensation claims still needs to be grounded  by some arguments.

Russian courts frequently support this type of remedy. For example, in the court case А40-299909/2022, the specialized Intellectual Property Rights Court of Russia supported trademark infringement compensation claims of a Chinese rights holder against two Russian companies. The compensation recovered was as high as about RUR 10,000,000 (about CNY 850,000).

Destruction can be practically applied to parallel imported goods within a civil case, too, but only if the goods are of inferior quality, or for the reasons of security, for safeguarding people’s health or life, protecting the environment or cultural values.

Administrative procedure has proven to be a time-and-cost-efficient tool against importation and sales of counterfeit goods. The trademark owner or its representative may file a motion with the customs/police to initiate administrative proceedings against trademark infringement, and the authorities shall then investigate the case and pass it to the court, where the rights holder shall be a third party to the infringement case.

According the Code on Administrative Offences of the Russian Federation (“RF CAO”), illegal use of the TM that constitutes administrative offence entails: (i) a fine imposed on the infringer in the amount of up to RUR 200,000 (about CNY 17,000) or up to five times of price of the infringing goods and (ii) confiscation of counterfeit goods and/or means of their manufacturing for further destruction.

As an example, trademark rights of a Chinese company were successfully enforced in terms of administrative proceedings against the sales of counterfeit goods on the Russian market in the court case No. A32-63403/2022. The court imposed a fine on the seller and ruled to confiscate fake goods for further destruction.

In case the violation of the trademark rights is committed repeatedly or causes substantial damage to the IPR owner exceeding the amount of RUR 400,000 (about CNY 34,000), it may entail criminal liability according to the Criminal Code of Russia.

II. Enforcement of Patent Rights

According to the Rospatent statistics, in 2023, China filed the highest number of patent applications in Russia. More than 1,550 patent applications for inventions, designs and utility models were filed by Chinese companies.

Patent rights can be enforced in Russia not only with regard to unauthorized use, but also in case of disclosure of the essence of an IP asset before its official publication or plagiarism.

In the framework of civil proceedings, the patent holder may seek remedies similar to those outlined above for the trademark enforcement, but with certain peculiarities arising from the nature of patent rights.

Administrative penalty for a patent infringement can be a fine of up to RUR 40,000 (about CNY 3,500).

If the patent infringement leads to substantial damage, criminal liability shall apply as per the Criminal Code of Russia.

III. Copyright Enforcement

Copyright holders may also enforce their rights in terms of civil proceedings, with the remedies similar to those outlined above for the trademark infringements.

For instance, Chinese copyright protecting the design of the toys was duly enforced by the specialized Russian IP Court in case No. А78-7153/2021 in 2023.

Illegal use of copyright may also constitute administrative offence as per the RF CAO, which entails: (i) a fine imposed in the amount of up to RUR 40,000 (about CNY 3,500) and (ii) confiscation of counterfeit goods and instruments used to commit the offence for further destruction.

In case of substantial damage caused to the copyright owner, criminal liability shall apply as per Article 146 of the Criminal Code of Russia.

IV. Out-of-court Remedies

In addition to the in-court IP enforcement remedies outlined above, we note that most commonly used out-of-court remedy would be forwarding a cease & desist letter to the infringing party. In the C&D letter, the IP owner may request the infringer to stop voluntarily the unauthorized use of intellectual property. Notably, in case the IP owner is considering claiming compensation for the IP infringement at court, an obligatory pre-judicial step of sending C&D letter is stipulated by the CC RF.   

Other out-of-court actions may relate to gathering information and evidence of the infringement and include, among others, investigations, test purchases, offline and online market monitoring, etc.

V. Border Protection

Importation of goods with the unauthorized use of the third parties’ IP rights via the Russian border would qualify for infringement in most cases. In order to facilitate customs enforcement, the Federal Customs Service of Russia maintains the Customs Intellectual Property Register of the Russian Federation (Customs IP Register), which is enforced by local customs authorities. Trademarks, copyrights, neighboring rights assets, appellations of origin or geographical indications can be registered with the Customs IP Register. Currently the Customs IP Register contains several thousand trademarks, including those of Chinese companies, and some copyrights/appellations of origin.

To sum it up, IP rights enjoy a high level of protection in Russia, provided that the IP assets of companies are duly registered in the territory and actively enforced. Overall, a complex approach covering border measures and enforcement actions on the offline and online market is the key to successful IP rights protection and enforcement that can be recommended to Chinese companies doing business in Russia.