Draft in the Second Reading
No 105252-3

May 15, 2002

AMENDMENTS AND MODIFICATIONS TO THE LAW OF THE RUSSIAN FEDERATION "ON TRADEMARKS, SERVICE MARKS AND APPELLATIONS OF ORIGIN"

Definition of Counterfeit Product
Article 4.2
Goods, trademarks, packaging, on which the trademark is used without the consent of its proprietor of the trademark are counterfeit.

Article 40.2
Goods, labels and packaging, on which an appellation of origin or a confusingly similar designation is used illegally, are counterfeit.

Definition of Infringement
Article 4. 2.

The use of a trademark, or of a designation confusingly similar thereto, without the consent of its proprietor with respect to goods, to which the trademark was registered, or in respect to similar goods in any way, including placing or indicating it:

• on a good, labels, packaging, which are produced, imported, offered for sale, sold, displayed at exhibitions and fairs or any other manner of introduction into commerce or stored and(or) transported with this purpose;
• in offers for safe of goods, while implementing works, providing services;
• in the global computer network Internet, in particular, in the domain name and in other ways of addressing shall be deemed to constitute an act of infringement of the exclusive right of such trademark's proprietor.

Measures to protect Rights
Article 46
Liability for Infringement upon the Right to Trademark and the Right to Appellation of Origin

1. Such use of a trademark or appellation of origin or of a designation similar to a trademark or appellation of origin as runs counter to the provisions of Article 4, Clause 2 and Article 40, Clause 2 of this Law shall entail civil , administrative criminal liability in accordance with Russian legislation.

2. Remedies available under civil law in connection with unlawful use of a trademark shall include the following, in addition to claims for the discontinuance of such infringement or for payment of related damages:

• publication of a court judgment in order to redress the damage done to the business reputation of the injured party;
• removal of the unlawfully used trademark or designation confusingly similar thereto from the corresponding counterfeit goods and/or destruction of the manufactured images of such trademark or designation confusingly similar thereto or destruction of counterfeit goods at the expense of the violator if it is not possible to remove the unlawfully used trademark or designation confusingly similar thereto from the corresponding except cases when these goods are transferred to the proprietor of the trademark as a compensation for damages incurred pursuant to his application, or turning counterfeit goods into the state revenue.

  3. A person making unlawful use of a registered appellation of origin or designation confusingly similar thereto shall be obliged, if required to do so by the holder of a certificate of the right to use such appellation of origin:

• to discontinue its use and compensate a governmental agency, public prosecutor or non-governmental organization for related losses in accordance with the legislation of the Russian Federation;
• to publish the relevant court judgment in order to redress the damage caused to the business reputation of the injured party; and
• remove the unlawfully used appellation of origin or designation confusingly similar thereto from the corresponding counterfeit goods, and/or destroy the manufactured images of such appellation of origin or designation confusingly similar thereto or destruction of the good if it is not possible to remove from it the unlawfully used trademark of designation confusingly similar thereto.

  4. The proprietor of the trademark and the holder of the certificate for the appellation of origin shall be entitled to request instead of reimbursement of the damage incurred a financial compensation ranging from 1,000 to 50,000 minimum salaries set forth by the legislation of the Russian Federation, in accordance with the court decision.

  5. A person affixing a warning sign regarding a trademark or appellation of origin which has not been duly registered in the Russian Federation shall be liable pursuant to the procedure laid down by Russian legislation.

Well Known Trademarks

* Chapter 2.1. Legal Protection of Well Known Trademark

Article 19.1. Well Known Trademark

1. A trademark protected in the Russian Federation on the basis of its state registration, a trademark protected in the Russian Federation without registration by virtue of an international agreement to which the Russian Federation is a party, and also a designation used as a trademark but having no legal protection in the Russian Federation, which have become well known in the Russian Federation among corresponding public community as a result of their intensive use in relation to goods of a certain legal entity or individual may be recognized to be a well known mark in the Russian Federation.

No trademark may be recognized to be well known if it becomes well known after the date of priority of another person's trademark identical with or confusingly similar to the former and intended for use in respect of similar goods.

2. A trademark well known in the Russian Federation shall be accorded legal protection provided for by this Law in respect of trademarks.

In the event that a trademark which has already been registered in respect of specific goods is recognized to be a trademark well known in the Russian Federation, legal protection shall also extend to dissimilar goods on condition that the use of such identical or confusingly similar trademark of designation by another person in respect of dissimilar goods points to their connection with the proprietor of the trademark well known in the Russian Federation and may encroach on such proprietor's interests.

Article 19.2. Extending Legal Protection to a Well Known Trademark

1. Legal protection shall be extended to a well known trademark pursuant to a decision of the Chamber for Patent-Related Disputes, by which a trademark is recognized to be well known in the Russian Federation in accordance with the findings of the review of the application requesting the recognition of the trademark to well known in the Russian Federation as filed by the person mentioned in Article 19, clause 1 of this Law.

The procedure for filing such application to, and for its review by, the Chamber for Patent-Related Disputes shall be laid down by the federal executive agency on intellectual property.

2. The federal executive agency on intellectual property shall record a trademark recognized to be well known in a List of Trademark Well Known in the Russian Federation (hereinafter, the "List").

3. The federal executive agency on intellectual property shall issue a certificate in respect of a well known trademark within one month after the date of the trademark's recording in the List. The form of the certificate and the content thereof shall be determined by the federal executive agency on intellectual property.

4. Information relating to a well known trademark recorded in the List in accordance with Clause 2 of this Article shall be published by the federal executive agency on intellectual property in the official newsletter forthwith after its recording in the List.

5. Legal protection extended to a well known trademark shall be of unlimited duration.

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