Protection of a Trademark Owner against Parallel Imports

The distributor was advised on available mechanisms for protecting trademark rights and preventing the importation into Russia of genuine products by unauthorized importers. The applicability of the parallel import rules to the relevant products was analyzed, including whether the products were included in the list approved by the Russian Ministry of Industry and Trade and the status of the relevant trademarks in Russia under international agreements.

The client was advised on the procedure for inclusion of trademarks in the Customs Register of Intellectual Property (TROIS), interaction with customs authorities when the release of goods is suspended and available judicial remedies. A comprehensive protection strategy and action plan were developed, including recording the trademarks in the Customs Register, interaction with online marketplaces (online shops), and pre-trial and judicial claims against sellers unlawfully using the trademarks in marketplace listings.

The necessary documents were prepared, and the legalization, translation into Russian and notarization of foreign official documents were arranged. The work involved communications with the trademark owner in English. The trademarks were successfully recorded in the Customs Register; protection of the foreign owner’s trademarks in Russia is based on international registrations under the Madrid System administered by WIPO.

Work with online marketplaces and unauthorized importers is ongoing. As a result, the client has obtained a comprehensive understanding of the available legal instruments and procedures for protecting its interests and trademark rights in connection with the unauthorized importation of products into the Russian market. A number of unauthorized sellers have also withdrawn from the market at the current stage.