One of the widespread violations of exclusive rights to trademarks (TM) is the transfer of counterfeit products and their components manufactured in other countries (except for the member states of the Eurasian Economic Union) to the territory of the Russian Federation for their onward sale within the country.
Experts in the field of intellectual property protection are unanimous in the opinion that it is far more effective to stop distribution of an entire shipment of counterfeits when it is first imported into Russia rather than search for fakes later at retail sites, retail chains and wholesale warehouses. This preventive measure enables right holders to detect poorly protected regions and keep an ear to the ground, which is crucial for implementing a comprehensive intellectual property protection strategy.
For this reason, in 2003, the Federal Customs Service of the Russian Federation (the FCS of Russia) developed the Customs Register of Intellectual Property Objects (Russian abbreviation — TROIS). Today, inclusion of trademarks, objects of copyright and related rights in TROIS is the most effective way of preventing illegal import of counterfeit products into Russia.
Benefits of including trademarks in TROIS
Based on our company’s experience, TROIS is indeed an effective tool, and therefore we recommend right holders use it to protect their TM. Once a trademark is included in the Сustoms Register, the Federal Customs Service of Russia is granted access to complete information about this trademark. Then, if products imported by persons who are not in the list of authorized importers have been detected, the FCS of Russia promptly contacts the right holder’s representative to determine the status of these products.
Including a trademark in TROIS allows right holders to:
- prevent counterfeit products from abroad from infiltrating the Russian market;
- protect intellectual property from parallel imports.
As part of our comprehensive strategy for protecting the intellectual property of our clients, TKM uses the Customs Register to:
- identify supply channels and violators;
- provide evidence for legal punishment of violators;
- protect our clients’ business reputation in the Russian market.
How to include a trademark in TROIS?
To include a trademark in the Customs Register, the right holder or their representative has to submit an application to the FCS of Russia along with documents that contain information on:
- the TM owner and the TM (e.g. a trademark extract from the WIPO International Bureau, etc.);
- the representative of the right holder who will interact with the customs authorities;
- authorized importers and legal import activities;
- products that violate the right holder’s rights;
- commitments to compensate for harm and an insurance contract.
Once included, a trademark remains in the TROIS database for a period of no longer than 3 years. This period cannot exceed the period of validity of the exclusive right to this trademark and of the representative’s power of attorney. After the initial registration expires, it can be renewed an unlimited number of times.
It is worth mentioning that the procedure of including a TM in the Customs Register involves a number of nuances, for example, in documents and their expiration dates or the specifics of documenting legal protection of national and international trademarks. For this reason, we recommend right holders contact professionals.
When registering a trademark in TROIS, TKM uses an individual approach to each right holder and provides full legal support at all stages. We prepare and submit an application to the FCS of Russia and communicate with them on all issues. Our team will make every effort to ensure that your trademark will be included in the Customs Register as soon as possible, and your brand reputation will be reliably protected!
If you have any questions related to this topic or would like to protect your trademarks from unauthorized use via the Customs Register, please call us at +7 (495) 540 44 57 or send an email to info@tkm-ic.com.