Today’s geopolitical developments have a strong influence on my daily work. It is therefore not surprising that I also have more and more questions about Russian law on my desk. Though not a standard area in my daily work, today I will shed light on Russian IP law and, in particular, on the current developments since the Russia-Ukraine war. I will discuss some popular myths about Russian IP law. In doing so, I will – as far as possible – make direct use of Russian legal norms.
A matter often discussed in legal literature was the alleged revocation of foreign trademark protection in Russia. The so-called Peppa Pig case (case No: 2.3.2022- A28-11930/2021) was brought forward. At the beginning of March 2022, the Russian commercial court of the Kirov region dismissed Entertainment One UK Limited’s claim against an alleged Russian trademark infringer for its Pappa Pig trademark. In the decision, Russian sanctions imposed by the UK in the aftermath of Russia’s invasion of Ukraine and the simultaneous application to sue were seen by the court as an “abuse of rights” – consequently, the application was dismissed. The court based its decision on Article 10.1 of the Russian Civil Code, which prohibits (1) the exercise of rights with the aim of causing harm to another (legal) person, (2) circumvention of the law with an unlawful aim, and (3) other abuse of rights. What then often could not be read: In June 2022, the competent court of appeal granted the application. The Appeal Court stated that in accordance with the Berne Agreement and the Madrid Convention, equal protection of intellectual property of foreign organizations, including those registered in the UK, must be guaranteed in the Russian Federation. The claimant was ultimately awarded the equivalent of EUR 82,000 in damages. The assertion of a general cancellation of trademark protection since the Russian invasion of Ukraine is therefore a myth and does not stand any ground.
A second issue that repeatedly appeared in the literature was the general release of patents registered in Russia by foreigners. First of all, there have actually been two notable cases in Russia in which patent protection has in principle been (temporarily) revoked. The first was in 2020, when the patent protection of the US companies Gilead Sciences, Inc. and Gilead Pharmasset, LLC was suspended for one year, and in March 2022, when the patent protection was again suspended for a limited period until 31 December 2022. This was done to make the ” corona drug ” remdesivir available to the public. What was often lost in the press afterwards: the manufacturers simultaneously received a not inconsiderable compensation claim through Russian Decree No. 299. Russia thus wanted to fulfil its international obligations for international IP protection according to Art. 31 of the Trade-Related Aspects of Intellectual Property Rights (“TRIPS”).
Most recently, it was also argued that any goods may now be imported into Russia without the consent of the rights holder. The protection of parallel importers with regard to IP-protected products is a core principle of international IP law according to the so-called “exhaustion principle”. In fact, such protection is no longer available for many Western products. However, this is not rampant. The Russian authorities have published a concrete list of goods for which IP protection is lifted (Link). According to industry experts, the scope of application is also overseeable and it is a myth that it would be “boundless”.