Protections for Trademark and Geographic Indications:
CIPR seeks legislative reforms in all countries of the region to support the following positions:
a. Procedures to Grant Well-known Trademark Status – CIPR advocates for procedures to review and grant well-known trademark status in conformity with international standards.
b. Opposition Procedures – CIPR advocates for amended trademark laws and trademark registration procedures to allow formal opposition procedures; a publicly accessible, promptly published, and comprehensive database of registered trademarks and pending applications; and a listing of standing requirements for plaintiffs in non-use cancellation proceedings.
c. Domain Names – CIPR advocates for legislation and regulations to implement an effective domain name dispute resolution system in the .ru TLD, consistent with international norms and to address possible trademark protection concerns raised by the introduction of Cyrillic domain names in the Russian Federation and in other countries of the region.
d. Trade Names – CIPR advocates for legislation to ensure that trade name owners can challenge infringing trade names.
e. Mandatory Trademark License Recordal – CIPR advocates for legislation to remove mandatory trademark license recordal requirements in line with Russia’s obligations under the Singapore Trademark Agreement, to ensure that recordal is not required for licenses to be valid and/or for use by the licensee to inure to the trademark owner.
f. Geographic Indications – CIPR advocates for language in the trademark laws of Russia and other countries in the region that complies with the principle of first-in-time/first-in-right and the 2005 WTO Panel Decision on geographic indications (and specifically to provide for the refusal of a geographic indication if it conflicts with a registered trademark).
Protections Against Parallel Imports
CIPR opposes parallel imports because they infringe on the rights of the legal trademark owner and increase the risk of lower quality goods and counterfeits to enter the marketplace. CIPR has advocated the adoption of a national exhaustion of rights standard and a regional exhaustion of rights standard for the Customs Union (Russia, Belarus and Kazakhstan), which was adopted in 2012. However, “grey market” importers have been lobbying the Russian parliament to support legislation to identify exceptions to law and provide more favorable treatment.
Commercial Secrets and Tech Transfer
CIPR advocates for better protections for commercial secrets and laws regulating technology transfers that provides effective IPR protections and will help to promote innovative economies in the countries in the region. More foreign investment in Eurasia will likely occur as more countries enter the WTO. Ukraine, Moldova, Kyrgyzstan, and Georgia are already members. In 2012, Russia completed the WTO accession process and became a WTO member. Kazakhstan will likely follow in 2013. IPR protections, including trade secrets, will be critical to maintaining a viable marketplace and investor confidence in the region.
Customs Union – Common IP Protections and TM Registry for Customs
On July 1, 2011, the three members of the Customs Union — Russia, Kazakhstan, and Belarus — removed the internal economic borders between them and internal customs controls were moved to the external border of the Customs Union. The members of the Customs Union are still in the process of establishing a Union-wide trademark registry for customs and developing mechanisms for cooperation among customs officials, as well as between customs officials, rights holders and their representatives, government bodies, other organizations, and individuals on issues pertaining to the registry.
CIPR advocates for the timely completion of the Customs Union’s harmonized IP legal system and a TM registry for customs that meet international standards in 2013. CIPR will work with other rights holders to assist the Customs Union members with transition issues that could negatively impact border protections against the import of counterfeits and parallel imports.
Improved Law Enforcement Practices
CIPR advocates for the following legislative/regulatory/enforcement priorities to combat counterfeiting in the region.
• Mandatory physical destruction of seized counterfeit goods and production equipment, or, alternatively, providing the rights owner the option to assume responsibility for such destruction.
• Improved enforcement practices against producers, distributors, and retailers of counterfeit goods in mainstream and “grey” markets, including an increased number of raids by law enforcement, rapid prosecution of alleged infringers, and the imposition of deterrent sanctions against counterfeiters and pirates.
• Further initiatives to foster law enforcement cooperation on border control issues and marketplace interdictions between Russia, Ukraine, Kazakhstan, and other countries in the region, as well as China, to improve anti-counterfeiting/piracy enforcement measures
• Information and experience exchange between U.S. government officials and government officials in Russia, Ukraine, Kazakhstan, and Belarus, and other countries in the region, on investigatory technology and cooperation.
• Clear civil and criminal rules establishing third party liability for Internet counterfeiting and piracy.
• Improved enforcement against Internet infringers, including the investigation and closure of websites offering counterfeit and pirated products and the prosecution of website operators.