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Portrait of Anton Bankovskiy

Anton Bankovskiy

Partner
Head of Intellectual Property

Contact
SEAMLESS Legal
Naberezhnaya Tower, block C
Naberezhnaya Tower Block C - 10 Presnenskaya Naberezhnaya
123112 Moscow
Russia
Languages English, Russian

Anton Bankovskiy is a partner and Head of Intellectual Property. 

Prior to joining the firm in 2012, he worked in several international law firms as counsel and associate. 

Anton has more than 20 years’ experience in advising on all aspects of intellectual property and TMT matters, including unfair competition. 

He also specialises in intellectual property dispute resolution. Anton is admitted to represent clients before the Russian Patent and Trademark Office (PTO), the Chamber for Patent and Trademark Disputes under Russian PTO and the Russian courts. 

Anton focuses on advising clients of different industries including consumer products, TMT, energy and life sciences.

He also advises clients on data protection issues, such as cross-border transfers, localisation rules, compliance of data processing with Russian regulations. 

Anton is a member of the International Trademark Association (INTA)’s Committee, the Chairman of the IP Committee of the Association of European Businesses in Russia as well as a member of the IP Committee of the Franco-Russian Chamber of Commerce and Industry (CCI France Russie).

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The “friendly and helpful” Anton Bankovskiy of CMS is an enforcement ace with bags of anti-counterfeiting and parallel enforcement experience.

WTR 1000

Relevant experience

  • Microsoft Corporation – representing the client in copyright audit matters in various Russian regions.
  • Swiss luxury brand – advising on IP protection issues in Russia, including preparing an agreement regulating the use of the client’s trademarks by distributors.
  • Ecolab – advising on trademark prosecution matters in Russia and the CIS.
  • Carrier Corporation (a member of the United Technologies Corporation) – advising on almost all IP issues, including trademark prosecution, domain name litigation, trademark infringement and trademark litigation, and protecting the client’s trademark portfolio in Russia. 
  • Japan Tobacco International – advising on trademark, patents and copyright infringement matters in Russia and the EU.
  • TESLA Holding – representing the client in the Russian IP Court for a trademark opposition case resulting in an amicable settlement, so that the client did not lose its trademark protection in Russia due to non-use.
  • Otis Elevator Company – representing the client in a number of cases connected to the unauthorised use of trademarks in Russia and the CIS.
  • German beer producer – advising on trademark prosecution and enforcement issues.
  • Large German shoe manufacturer – advising on trademark prosecution issues in Russia, non-use cancellation matters and objections procedures.
  • International network of fast-food restaurants – representing the client in relation to the out-of-court resolution of disputes with a domain name owner.
  • Multinational retail company – advising on personal data issues of a mobile application in Russia.
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Memberships & Roles

  • International Trademark Association (INTA), Committee Member
  • Association of European Businesses in Russia, Chairman of IP Committee
  • CCI France Russie, IP Committee
  • Working group in the field of intellectual property on the implementation of the mechanism of "regulatory guillotine" under the Government of the Russian Federation
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Awards & Rankings

  • Best Lawyers 2021, Information Technology Law
  • Best Lawyers 2021, Intellectual Property Law
  • Best Lawyers 2021, Regulatory Practice
  • WTR 100 2021, Intellectual Property: enforcement and litigation
  • “The “friendly and helpful” Anton Bankovskiy is an enforcement ace with bags of anti-counterfeiting and parallel enforcement experience,” WTR 1000 2020
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Publications

  • The Intellectual Property Review, Edition 6 – 9, Chapter (Russia), Law Business Research Ltd
  • CMS Expert Guide to e-signatures in commercial contracts, July 2020
  • CMS Expert Guide to COVID-19's impact on IP legal timings, June 2020
  • Data Law Navigator, Russia, May 2020 
  • CMS Doing Business in Russia guide, chapters on intellectual property and personal data protection 
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Education

  • 2002, Institute of State and Law, Russian Academy of Sciences (PhD)
  • 1998, Moscow State University of International relations (MGIMO University, Degree in Law)
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05/07/2022
In­tel­lec­tu­al prop­erty: re­cent de­vel­op­ments
Over the past fort­night, there have been sev­er­al im­port­ant de­vel­op­ments in the field of in­tel­lec­tu­al prop­erty worthy of spe­cial men­tion. They re­late to par­al­lel im­ports and the pro­tec­tion of rights hold­ers from the so-called “un­friendly” states.Change in the reg­u­la­tion of par­al­lel im­portsOn 28 June 2022, the Pres­id­ent signed a law* amend­ing the pro­vi­sions of Fed­er­al Law No. 46 re­lat­ing to the reg­u­la­tion of par­al­lel im­ports.Ini­tially, Fed­er­al Law No. 46 gave the Rus­si­an gov­ern­ment the au­thor­ity to de­term­ine the list of goods al­lowed for par­al­lel im­ports. The gov­ern­ment del­eg­ated the au­thor­ity to is­sue this list to the Min­istry of In­dustry and Trade.In prac­tice, des­pite the ad­op­tion of the list, ques­tions arose about the leg­al pro­tec­tion of those who plan to en­gage in par­al­lel im­ports. Com­pan­ies feared that such meas­ures would not pro­tect them against claims from rights hold­ers.To ad­dress this is­sue, the de­cision was made to in­tro­duce more changes at the le­gis­lat­ive level.The new pro­vi­sions of the law sug­gest that the use of someone else’s in­tel­lec­tu­al prop­erty will not be an in­fringe­ment if the goods con­tain­ing that in­tel­lec­tu­al prop­erty are in the list of goods of the Min­istry of In­dustry and Trade per­mit­ted for par­al­lel im­port­a­tion.However, the ad­op­ted amend­ments leave one im­port­ant ques­tion un­answered: to what ex­tent can this reg­u­la­tion ap­ply to coun­ter­feit goods?If we delve deep­er in­to the mean­ing and pur­pose of the par­al­lel im­port­a­tion pro­vi­sions, it be­comes clear that coun­ter­feit goods should still be pro­hib­ited. It is not in the in­terest of the state to en­cour­age such activ­ity, par­tic­u­larly be­cause the pro­du­cers of coun­ter­feit goods will not be re­spons­ible for their prop­er qual­ity and safety, nor will they en­sure their war­ranty ser­vice. Fur­ther­more, the trans­par­ency of such activ­ity for tax pur­poses is at the very least ques­tion­able.This view is sup­por­ted* by, among oth­ers, of­fi­cials stat­ing that the leg­al­isa­tion of par­al­lel im­ports does not im­ply that coun­ter­feit­ing is al­lowed.Thus, tak­ing in­to ac­count the gen­er­al ap­proach of the le­gis­la­tion on this is­sue and the ob­ject­ives of the par­al­lel im­port­a­tion mech­an­ism, we can con­clude that the le­git­im­ate in­terests of rights hold­ers to re­move coun­ter­feit goods from the mar­ket should be pro­tec­ted, even in light of the ad­op­ted amend­ments. The am­bi­gu­ity of some of the word­ing of the new laws can prob­ably be ex­plained by the le­gis­lat­or’s haste rather than its in­ten­tion to leg­al­ise coun­ter­feit goods.Re­versal of the de­cision in the fam­ous “Peppa Pig” case*On 21 June 2022, the Second Com­mer­cial Court of Ap­peal quashed the de­cision of the Kirov Re­gion­al Court in the “Peppa Pig” case and sat­is­fied the rights hold­er’s claim for com­pens­a­tion for in­fringe­ment of its ex­clus­ive rights to a trade­mark.As a re­fresh­er, on 3 March 2022, the Kirov Re­gion­al Com­mer­cial Court dis­missed the claim of a Brit­ish com­pany for trade­mark in­fringe­ment of the im­age of the Peppa Pig char­ac­ter, stat­ing that the very fact that the plaintiff went to court was an ab­use of rights as the com­pany is re­gistered in a state which im­posed sanc­tions against Rus­sia.This case pro­voked much spec­u­la­tion that the in­tel­lec­tu­al prop­erty of for­eign rights hold­ers is no longer pro­tec­ted in Rus­sia.In a pre­vi­ous alert on the sub­ject, we noted that more re­cent court de­cisions rais­ing the is­sue of the so-called “un­friendly” ori­gin of com­pan­ies did not sup­port the view of the Kirov Re­gion­al Court.The high­er court also dis­agreed and re­viewed the de­cision on ap­peal. In its judg­ment, the court noted that for­eign com­pan­ies, in­clud­ing those re­gistered in the UK, are guar­an­teed to re­ceive equal pro­tec­tion of their in­tel­lec­tu­al prop­erty in Rus­sia.The ap­pel­late court’s find­ings con­firmed that the de­cision in the Peppa Pig case was the ex­cep­tion rather than the rule, and that pro­tec­tion of in­tel­lec­tu­al prop­erty rights could not be denied on the sole ground that the com­pany was re­gistered in a state that had im­posed sanc­tions against Rus­sia.* In Rus­si­anCo-au­thored by Sher­met Kur­b­an­ov, Paralegal in In­tel­lec­tu­al Prop­erty.
06/06/2022
Pay­ment pro­ced­ure changed for use of for­eign in­tel­lec­tu­al prop­erty
On 27 May 2022, the Rus­si­an Pres­id­ent signed De­cree No. 322* (the “De­cree”) that sets up a spe­cial pro­ced­ure for the pay­ment of li­cens­ing and oth­er pay­ments to for­eign right­shold­ers from “un­friendly” states for the use of their in­tel­lec­tu­al prop­erty.Thus, in or­der to duly ful­fil the ob­lig­a­tions to such right­shold­er, the li­censee or oth­er per­son ob­liged to make pay­ment in fa­vour of the right­shold­er (the “Debt­or”) pays the ap­pro­pri­ate amount in roubles to a spe­cial “O” type ac­count opened in an au­thor­ised bank in the name of the for­eign right­shold­er. If the agree­ment provides for pay­ment in for­eign cur­rency, the Debt­or de­pos­its in­to the ac­count an amount in roubles equi­val­ent to the ob­lig­a­tions in for­eign cur­rency at the of­fi­cial ex­change rate of the Cent­ral Bank of the Rus­si­an Fed­er­a­tion.The pro­ced­ure in­tro­duced by the De­cree ap­plies in par­tic­u­lar to right­shold­ers as­so­ci­ated with “un­friendly” states and their con­trolled en­tit­ies (the “Right­shold­er”).However, the doc­u­ment also sets out spe­cif­ic ex­cep­tions. For ex­ample, this pro­ced­ure does not ap­ply to:right­shold­ers from “un­friendly” states if they are con­trolled by Rus­si­an in­di­vidu­als or leg­al en­tit­ies, provided that in­form­a­tion on such con­trol has been dis­closed to the Rus­si­an tax au­thor­it­ies;right­shold­ers from “un­friendly” states who duly ful­fil their con­trac­tu­al ob­lig­a­tions to their Rus­si­an coun­ter­parties;con­tracts re­lated to the im­port­a­tion of medi­cines or med­ic­al devices in­to Rus­sia, the pro­vi­sion of com­mu­nic­a­tion ser­vices, and the cre­ation and/or use of soft­ware in Rus­sia.The pay­ment mech­an­ism es­tab­lished by the De­cree is as fol­lows.A Debt­or sub­mits an ap­plic­a­tion to an au­thor­ised Rus­si­an bank to open a spe­cial “O” type ac­count in the name of the for­eign Right­shold­er. One Right­shold­er may only have one such ac­count.The bank no­ti­fies the Right­shold­er by post, email or tele­phone that an “O” type ac­count has been opened in its name.The Right­shold­er provides the Debt­or with writ­ten con­sent (in­clud­ing elec­tron­ic con­sent) to make pay­ments to the “O” type ac­count. Un­til such con­sent has been giv­en, the Debt­or is not ob­liged to make any pay­ments and no con­trac­tu­al pen­al­ties may arise. The Debt­or makes the pay­ment spe­cified in the agree­ment with the Right­shold­er to the “O” type ac­count and is deemed to have ful­filled its con­trac­tu­al ob­lig­a­tions as of that mo­ment, re­gard­less of wheth­er the Right­shold­er has con­sen­ted.Sub­ject to the pre­scribed pro­ced­ure, Debt­ors may con­tin­ue to use the li­censed in­tel­lec­tu­al prop­erty.The De­cree was ad­op­ted to sta­bil­ise the cur­rent situ­ation where some for­eign com­pan­ies either re­fuse the per­mis­sion pre­vi­ously gran­ted to use their in­tel­lec­tu­al prop­erty or can­not ac­cept pay­ment due to re­stric­tions on in­ter­na­tion­al trans­ac­tions, while Rus­si­an com­pan­ies are will­ing to con­tin­ue us­ing such in­tel­lec­tu­al prop­erty.* In Rus­si­an
30/05/2022
US re­moves in­tel­lec­tu­al prop­erty from scope of Rus­sia-re­lated sanc­tions
Since the in­tro­duc­tion of sanc­tions against Rus­sia, US com­pan­ies op­er­at­ing in Rus­sia have faced a num­ber of chal­lenges in con­tinu­ing busi­ness. For ex­ample, in the IP area one of the press­ing prob­lems has been the pay­ment of of­fi­cial fees for re­gis­ter­ing or main­tain­ing in­tel­lec­tu­al prop­erty in Rus­sia. In view of the US sanc­tions, com­pan­ies were con­cerned that US au­thor­it­ies would con­sider these ac­tions as fin­an­cing Rus­sia, with all the neg­at­ive con­sequences that would fol­low.On 5 May 2022, the US De­part­ment of the Treas­ury cla­ri­fied this and oth­er is­sues re­lated to in­tel­lec­tu­al prop­erty. The De­part­ment ad­op­ted Gen­er­al Li­cence No. 31 (the “Gen­er­al Li­cence”), amend­ing in part the Rus­si­an Harm­ful For­eign Activ­it­ies Sanc­tions Reg­u­la­tions.The Gen­er­al Li­cence ex­cluded trans­ac­tions re­lated to copy­rights, trade­marks and pat­ents from the sanc­tions re­gime, es­tab­lish­ing a list of trans­ac­tions that are not sub­ject to re­stric­tions. Such trans­ac­tions in­clude:fil­ing and pro­sec­u­tion of any ap­plic­a­tion to ob­tain a pat­ent, trade­mark, copy­right or oth­er form of in­tel­lec­tu­al prop­erty pro­tec­tion;re­ceipt of a pat­ent, trade­mark, copy­right or oth­er form of in­tel­lec­tu­al prop­erty pro­tec­tion;re­new­al or main­ten­ance of a pat­ent, trade­mark, copy­right or oth­er form of in­tel­lec­tu­al prop­erty pro­tec­tion; and­fil­ing and pro­sec­u­tion of any op­pos­i­tion or in­fringe­ment pro­ceed­ing with re­spect to a pat­ent, trade­mark, copy­right or oth­er form of in­tel­lec­tu­al prop­erty pro­tec­tion, or the en­trance of a de­fence to any such pro­ceed­ing.In gen­er­al, the US au­thor­it­ies have answered two ba­sic ques­tions:Wheth­er Rus­si­an com­pan­ies can re­gister, main­tain and pro­tect in­tel­lec­tu­al prop­erty in the US.Wheth­er US com­pan­ies can do the same in Rus­sia. Ef­fect on Rus­si­an com­pan­ies Both in Rus­sia and the US, the ter­rit­ori­al prin­ciple of in­tel­lec­tu­al prop­erty pro­tec­tion, es­tab­lished by a num­ber of in­ter­na­tion­al agree­ments, ap­plies. This means that these rights are lim­ited to the coun­try in which the in­tel­lec­tu­al prop­erty was cre­ated.There­fore, un­der cur­rent cir­cum­stances, Gen­er­al Li­cence ap­provals are cru­cial for the pro­tec­tion of pat­ent rights and trade­marks in the US be­cause their pro­tec­tion is dir­ectly linked to the re­gis­tra­tion of in­tel­lec­tu­al prop­erty in the coun­try.The situ­ation is slightly dif­fer­ent with copy­right. Ac­cord­ing to the pro­vi­sions of the Berne Con­ven­tion, each mem­ber coun­try grants to cit­izens of oth­er mem­ber coun­tries the same copy­rights as it grants to its own cit­izens. In oth­er words, we can say that the in­ter­na­tion­al prin­ciple of pro­tec­tion was es­tab­lished for copy­right, but with­in the coun­tries that signed the con­ven­tion (cur­rently, there are 181 sig­nat­or­ies, in­clud­ing Rus­sia and the US).However, the copy­right pro­vi­sions of the Gen­er­al Li­cence do not lose their rel­ev­ance.Thus, the US Treas­ury De­part­ment’s Gen­er­al Li­cence fa­vours the pro­tec­tion of in­tel­lec­tu­al prop­erty of Rus­si­an right­shold­ers in the US. Ef­fect on US com­pan­ies As men­tioned above, US com­pan­ies have faced un­cer­tainty about what to do with in­tel­lec­tu­al prop­erty re­gistered in Rus­sia. Com­pan­ies were con­cerned that con­tinu­ing to main­tain in­ven­tions or trade­marks through the pay­ment of of­fi­cial fees would be seen as fin­an­cing Rus­sia.To ad­dress this is­sue, in March 2022, the US De­part­ment of the Treas­ury is­sued Gen­er­al Li­cence No. 13, which spe­cifies that US com­pan­ies are al­lowed to pay taxes, fees or im­port du­ties, provided such trans­ac­tions are nor­mal and ne­ces­sary for their day-to-day op­er­a­tions. The li­cence is val­id un­til 23 June 2022.The is­su­ance of Gen­er­al Li­cence No. 13 did not an­swer oth­er ques­tions re­lated to the use of in­tel­lec­tu­al prop­erty in Rus­sia, nor did it an­swer the ques­tion of wheth­er it is pos­sible to pay state fees after 23 June 2022.These ques­tions were answered in the Gen­er­al Li­cence. Giv­en the per­mis­sions set forth in the Gen­er­al Li­cence, it is safe to say that the re­gis­tra­tion, main­ten­ance and pro­tec­tion of in­tel­lec­tu­al prop­erty, in­clud­ing the pay­ment of of­fi­cial fees for such ac­tions, is not pro­hib­ited in Rus­sia for Amer­ic­an com­pan­ies.Moreover, through these ac­tions, the US gov­ern­ment is ba­sic­ally re­com­mend­ing that US com­pan­ies keep con­trol of their in­tel­lec­tu­al prop­erty in Rus­sia. Dif­fi­cult times will even­tu­ally pass while in­tel­lec­tu­al prop­erty will con­tin­ue to play an im­port­ant role in busi­ness de­vel­op­ment.Con­versely, the loss of in­tel­lec­tu­al prop­erty in Rus­sia would be ac­com­pan­ied only by neg­at­ive con­sequences such as:loss of pri­or­ity to in­tel­lec­tu­al prop­erty;loss of brand in Rus­sia;cap­ture of the brand’s tar­get audi­ence by oth­er com­pan­ies that have con­tin­ued to op­er­ate in Rus­sia;gradu­al ob­li­vi­on of the brand by Rus­si­an con­sumers;loss of mar­ket­ing in­vest­ment that has been spent on pop­ular­ising the brand, etc.Clearly, re­gis­ter­ing and main­tain­ing in­tel­lec­tu­al prop­erty is a per­miss­ible and, in fact, re­com­men­ded busi­ness activ­ity in both Rus­sia and the US.Co-au­thored by Sher­met Kur­b­an­ov, Paralegal in In­tel­lec­tu­al Prop­erty
19/05/2022
The In­tel­lec­tu­al Prop­erty Law Re­view 2022
The coronavir­us pan­dem­ic has con­tin­ued to im­pact all as­pects of life over the past year, re­quir­ing gov­ern­ments, busi­nesses and in­di­vidu­als to ad­just and ad­apt. Now that bor­der re­stric­tions and shut­downs due to the vir­us are lessen­ing and in­ter­na­tion­al trade re­mains high, the need to main­tain the world’s in­ter­con­nec­ted­ness and re­li­ance on in­ter­na­tion­al trade is en­hanced and, at the same time, the stakes in­volved with that trade have in­creased con­sid­er­ably. Against this back­drop, in­tel­lec­tu­al prop­erty prac­ti­tion­ers must nav­ig­ate a vari­ety of leg­al sys­tems and in­tel­lec­tu­al prop­erty laws in which many dif­fer­ences re­main, des­pite some move­ments to­ward har­mon­isa­tion. Read the Rus­sia chapter in the In­tel­lec­tu­al Prop­erty Law Re­view 2022, pre­pared by Ant­on Bankovskiy in early Feb­ru­ary 2022. The chapter provides an over­view of the Rus­si­an reg­u­la­tions in the in­tel­lec­tu­al prop­erty in­dustry.This art­icle was pre­pared for and first pub­lished by The Law Re­views in April 2022. 
13/05/2022
What will hap­pen to for­eign in­tel­lec­tu­al prop­erty in Rus­sia?
In re­sponse to in­ter­na­tion­al sanc­tions, Rus­sia is­sued a series of reg­u­la­tions in the area of in­tel­lec­tu­al prop­erty.Dur­ing the last two months, there have been alarm­ing sig­nals that the in­tel­lec­tu­al prop­erty of for­eign right­shold­ers could be threatened or lose pro­tec­tion in Rus­sia. However, these con­clu­sions ap­pear pre­ma­ture.In re­sponse to the cur­rent de­vel­op­ments, the at­ten­tion of vari­ous mar­ket play­ers and stake­hold­ers has been drawn to the fol­low­ing is­sues:• Can Rus­si­an com­pan­ies use for­eign pat­en­ted in­ven­tions, util­ity mod­els or in­dus­tri­al designs without ob­tain­ing con­sent or without the need to pay the right­shold­ers?• Do the same rules ap­ply to oth­er types of in­tel­lec­tu­al prop­erty?• What does the in­tro­duc­tion of par­al­lel im­port­a­tion in Rus­sia mean for for­eign com­pan­ies?• Is trade­mark squat­ting now al­lowed in Rus­sia?• Fol­low­ing the so-called “Peppa Pig” case, will the rights of for­eign com­pan­ies be pro­tec­ted be­fore the Rus­si­an courts?Based on ex­ist­ing le­gis­la­tion and case-law, the fol­low­ing an­swers to these ques­tions con­firm that in­tel­lec­tu­al prop­erty will re­main pro­tec­ted in Rus­sia.Use of for­eign pat­en­ted in­ven­tions or in­dus­tri­al design­sOn 6 March 2022, the Rus­si­an Gov­ern­ment (the “Gov­ern­ment”) is­sued De­cree No. 299*, which amended the meth­od for de­term­in­ing the amount of com­pens­a­tion to a right­shold­er for the use of its pat­ent-pro­tec­ted ob­ject without con­sent (“Com­puls­ory Li­cens­ing”). For pat­enthold­ers from for­eign states that com­mit “un­friendly acts” against Rus­sia (“Un­friendly States”), this com­pens­a­tion was re­duced to zero.It is im­port­ant to note that this pro­ced­ure only ap­plies when the Gov­ern­ment trig­gers the mech­an­ism of Com­puls­ory Li­cens­ing set out in Art­icle 1360 of the Rus­si­an Civil Code.The art­icle al­lows for the use of an in­ven­tion, util­ity mod­el or in­dus­tri­al design without the con­sent of the pat­entee, sub­ject to the fol­low­ing lim­it­a­tions:•  the pro­vi­sions may only be ap­plied in the lim­ited cases strictly laid down in the art­icle;•  this de­cision is taken by a sep­ar­ate Gov­ern­ment de­cree and ex­tends solely to the spe­cif­ic pat­ent held by a par­tic­u­lar right­shold­er for a lim­ited peri­od of time;•  such a de­cision gives this pat­ent use to a spe­cified com­pany, not to any per­son or en­tity;•  the pat­entee must be provided with the com­pens­a­tion es­tab­lished by Gov­ern­ment de­cree (for com­pan­ies from “Un­friendly States” – zero, for com­pan­ies from oth­er coun­tries – a 0.5% roy­alty, as has been the case since 2021);•  this de­cision does not lim­it the right­shold­er’s abil­ity to ex­er­cise its rights with­in the Rus­si­an Fed­er­a­tion or to li­cense these rights to someone else.An­swer­ing the ques­tion of wheth­er Rus­si­an com­pan­ies are ob­liged to pay com­pens­a­tion to pat­ent own­ers from “Un­friendly States” when us­ing their pat­ent-pro­tec­ted ob­jects, the an­swer is yes, they do. The Gov­ern­ment can make ex­cep­tions for a par­tic­u­lar Rus­si­an com­pany and a par­tic­u­lar pat­ent.As for ex­cep­tions, Art­icle 1360 of the Rus­si­an Civil Code has been used only twice for the peri­od of its ex­ist­ence since 2008, and in both cases it was re­lated to vi­tal drugs.In ad­di­tion, it should be re­called that Art­icle 1360 of the Rus­si­an Civil Code was ad­op­ted in ac­cord­ance with the pro­vi­sions of Art­icle 31 of the TRIPS Agree­ment and it is sim­il­ar to the same leg­al pro­vi­sions in oth­er coun­tries.Can Com­puls­ory Li­cens­ing be ap­plied to oth­er types of in­tel­lec­tu­al prop­erty?Art­icle 1360 of the Rus­si­an Civil Code (the rule on Com­puls­ory Li­cens­ing) ap­plies only to in­ven­tions, util­ity mod­els or in­dus­tri­al designs and can­not be ap­plied to oth­er in­tel­lec­tu­al prop­erty, in­clud­ing soft­ware or trade­marks.Fur­ther­more, there is no oth­er sim­il­ar reg­u­la­tion for oth­er in­tel­lec­tu­al prop­erty ob­jects in Rus­sia.Par­al­lel im­port­a­tion in Rus­siaOn 29 March 2022, the Gov­ern­ment is­sued De­cree No. 506*, which partly leg­al­ised par­al­lel im­port­a­tion, by es­tab­lish­ing the in­ter­na­tion­al prin­ciple of ex­haus­tion of rights to in­ven­tions, util­ity mod­els, in­dus­tri­al designs and trade­marks.This means that if genu­ine goods have been leg­ally put on the mar­ket by the right­shold­er in any part of the world, these goods can then be freely sold in the ter­rit­ory of Rus­sia without the ad­di­tion­al con­sent of the right­shold­er. This prin­ciple will not ap­ply to all goods, but only to those lis­ted in a spe­cial list* pre­pared by the Rus­si­an Min­istry of In­dustry and Trade. The De­cree is meant for products of com­pan­ies that de­clared their exit from the Rus­si­an mar­ket and do not im­port their products to Rus­sia.The Rus­si­an Min­is­ter of In­dustry and Trade noted* that the list of goods al­lowed for par­al­lel im­ports will be nar­rowed (goods will be ex­cluded from the list) if for­eign com­pan­ies de­cide to con­tin­ue op­er­at­ing in Rus­sia and sup­ply their products to the Rus­si­an mar­ket.A sim­il­ar sys­tem with cer­tain spe­cif­ic fea­tures also ap­plies in the US.Is trade­mark squat­ting now al­lowed in Rus­sia?Over the past few weeks, amid news of for­eign com­pan­ies leav­ing the coun­try, sev­er­al dozen trade­mark ap­plic­a­tions have been sub­mit­ted to the Rus­si­an Trade­mark Of­fice, “Rospat­ent”, that were identic­al or con­fus­ingly sim­il­ar to well-known for­eign brands.However, the pro­ced­ure for re­gis­ter­ing a trade­mark at Rospat­ent, as in any oth­er pat­ent of­fice around the world, gen­er­ally con­sists of the fol­low­ing steps:•  sub­mis­sion of a trade­mark ap­plic­a­tion to the pat­ent of­fice for re­gis­tra­tion;•  a trade­mark ex­am­in­a­tion (in­clud­ing check­ing wheth­er the re­gis­tra­tion in­fringes someone else’s rights on their trade­marks);•  a trade­mark re­gis­tra­tion.Any­one is en­titled to ap­ply for the re­gis­tra­tion of a trade­mark, but this does not mean that any mark will be re­gistered. In fact, Rospat­ent has con­sist­ently denied re­gis­ter­ing des­ig­na­tions even dis­tantly re­sem­bling re­gistered trade­marks.Moreover, on 1 April 2022, as the is­sue be­came highly pub­li­cised, Rospat­ent re­leased its po­s­i­tion* re­gard­ing trade­marks sim­il­ar to well-known for­eign brands, not­ing that a pre­vi­ously re­gistered identic­al or sim­il­ar trade­mark known in Rus­sia pre­vents the re­gis­tra­tion of the trade­mark in ques­tion.Will the rights of for­eign com­pan­ies be pro­tec­ted be­fore Rus­si­an courts?The dis­cus­sion about the in­ab­il­ity of for­eign com­pan­ies to de­fend their rights be­fore Rus­si­an courts began with the “Peppa Pig” case*.On 3 March 2022, the Com­mer­cial Court of the Kirov Re­gion dis­missed the law­suit of a UK com­pany for the trade­mark in­fringe­ment of the Peppa Pig char­ac­ters, call­ing the very fact of go­ing to court an ab­use of rights, be­cause the com­pany is re­gistered in a state that has im­posed sanc­tions against Rus­sia.The case has been strongly cri­ti­cised by the Rus­si­an busi­ness com­munity. The de­cision is not cur­rently in force and is be­ing re­viewed by the court of ap­peal.In oth­er words, as of today, no judg­ments in Rus­sia have been fi­nal­ised that would deny a for­eign com­pany pro­tec­tion of its rights on the grounds that it is re­gistered in an “Un­friendly State”.Moreover, later judg­ments rais­ing the is­sue of the “un­friendly” ori­gin of com­pan­ies have not fol­lowed this ap­proach. The courts reasoned that the ori­gin of an en­tity does not in it­self in­dic­ate an ab­use of rights by that en­tity. This reas­on­ing has been re­flec­ted in the fol­low­ing judg­ments:•  De­cision* of the Com­mer­cial Court of the Chelyab­insk Re­gion dated 29 March 2022 in case No. A76-42835/2021;•  De­cision* of the Com­mer­cial Court of Mo­scow dated 31 March 2022 in case No. A40-162262/2020;•  De­cision* of the Fifth Com­mer­cial Court of Ap­peal dated 1 April 2022 in case No. A51-20464/2021;•  De­cision* of the Com­mer­cial Court of the Krasnodar Ter­rit­ory dated 4 April 2022 in case No. A32-4335/2022;•  De­cision* of the Com­mer­cial Court of the Re­pub­lic of Al­tai dated 4 April 2022 in case No. A02-31/2022;•  De­cision* of the Com­mer­cial Court of the Re­pub­lic of Ud­mur­tia dated 8 April 2022 in case No. A71-16168/2021.Con­clu­sion­Due to re­cent events, Rus­si­an in­tel­lec­tu­al prop­erty law has un­der­gone changes, but these al­ter­a­tions have not un­der­mined the pro­tec­tion of in­tel­lec­tu­al prop­erty rights for for­eign com­pan­ies. Mean­while, many fea­tures of the new laws have been taken out of con­text and mis­rep­res­en­ted.In es­sence, all counter-sanc­tions taken by the Gov­ern­ment are primar­ily eco­nom­ic in nature, aimed at sup­port­ing the eco­nomy (e.g. lim­it­ing the with­draw­al of cur­rency) and de­liv­er­ing prop­er coun­ter­meas­ures (e.g. re­stric­tions on flights or trans­port). Meas­ures in the area of in­tel­lec­tu­al prop­erty are pin­pointed and aimed at pro­tect­ing spe­cif­ic in­terests as is the case with Com­puls­ory Li­cens­ing, which was only used in the past in cases of vi­tally needed drugs.Thus, in­tel­lec­tu­al prop­erty is still pro­tec­ted by law and leg­al prac­tices, both for Rus­si­an and for­eign com­pan­ies.* In Rus­si­an
30/07/2021
CMS Rus­sia entered the rank­ing for lead­ing IP prac­ti­tion­ers MIP IP Stars
IP STARS is the lead­ing re­source for com­pan­ies or in­di­vidu­als look­ing for ex­per­i­enced leg­al prac­ti­tion­ers for con­ten­tious and non-con­ten­tious IP ad­vice. The rank­ings are based on a weighted re­view of in­form­a­tion sub­mit­ted by firms, pub­licly avail­able in­form­a­tion, and mar­ket feed­back. Man­aging IP has been cov­er­ing IP law and prac­tice since 1990.
16/07/2021
Rus­sia ad­opts law for­cing for­eign IT com­pan­ies to “land” in the coun­try
16 Ju­ly 2021
16/06/2021
Per­son­al data pro­tec­tion
This chapter of Do­ing busi­ness in Rus­sia out­lines the main data pro­tec­tion pro­vi­sions and top­ics rel­ev­ant in the coun­try.
11/06/2021
The In­tel­lec­tu­al Prop­erty Re­view 2021
The Rus­sia Chapter of the In­tel­lec­tu­al Prop­erty Re­view 2021 provides an over­view of the Rus­si­an IP frame­work, re­cent changes and de­vel­op­ments, and a look for­ward at ex­pec­ted trends. 
10/06/2021
CMS Rus­sia earns a re­cord num­ber of re­cog­ni­tions by Best Law­yers 2022
Strong re­cog­ni­tion by the rank­ing 32 CMS Rus­sia ex­perts have been se­lec­ted for in­clu­sion in­to the 2022 edi­tion of the Best Law­yers rank­ing. In total, we have earned 74 re­cog­ni­tions by the rank­ing :Ant­on...
26/05/2021
In­tel­lec­tu­al Prop­erty Rights: Re­cent trends, court prac­tices, prob­lems...
The As­so­ci­ation of European Busi­nesses In­tel­lec­tu­al Prop­erty Com­mit­tee is host­ing its an­nu­al open event “In­tel­lec­tu­al Prop­erty Rights: Re­cent trends, court prac­tices, prob­lems and solu­tions”.The...
06/05/2021
In­tel­lec­tu­al prop­erty
This chapter of Do­ing busi­ness in Rus­sia is ded­ic­ated to in­tel­lec­tu­al prop­erty is­sues in the coun­try.