Embassy of the United States

IPR Toolkit

Enforcement Options

Rightsholders can pursue action against suspected intellectual property infringers through one of three channels: criminal, civil or administrative. Each has advantages and pitfalls that rightsholders should consider before taking action. As always, you should consider retaining local legal counsel to advise you on any of these approaches.

Russian law enforcement authorities have repeatedly stressed the importance of rightsholder cooperation with law enforcement -- bringing complaints, providing evidence and following cases through to their conclusion. In certain cases, rightsholders can pursue a combination of civil, criminal and administrative remedies.

Civil Law Options

Civil law remedies are available for violations of copyright and neighboring rights, inventors' rights, patent rights, and trademark rights. This approach offers several advantages and drawbacks relative to other enforcement options:

Advantages

• The rightsholder is involved directly in the proceedings
• There are broad possibilities for obtaining relief and damages
• There is no need to prove the infringer's guilt, criminal intent, or gross damage
• The Russian Civil Code, unlike the Russian Criminal Code, provides for judicial action against legal entities. Therefore an employer can be held liable for damages caused by its employee

Disadvantages

• Difficulty Obtaining Evidence -- As a general rule, to initiate a civil case against an infringer, the plaintiff must present evidence of an infringement. In most cases, it is necessary to make a documented test purchase, conducted either by police or by a consumers' society. A "private" purchaser has no legal means by which to search records in order to establish whether the infringement in question was a single act or a recurring act by the infringer. In addition, a rightsholder, unlike the police, cannot readily conduct a search of the premises of a suspected infringer.
• Slow Resolutions -- Civil cases, which are brought in arbitration courts (specialized commercial courts authorized to hear economic disputes between legal entities), are slow. Even when a plaintiff receives a favorable judgment, the appeals process can continue up to several years.
• Diffult to prove damages -- If goods are not sold, it can be hard to prove to a court that a rightsholder has actually suffered any compensable damages.
• Difficult to Execute a Judgment -- Some rightsholders have been successful in pursuing civil cases against employers in arbitration courts. However, civil enforcement through arbitration courts often cannot enforce a monetary judgment against the actual infringing organization. Many defendant organizations are legal entities with minimal assets against which a civil judgment may be enforced. Piercing the corporate veil has proven difficult for many rightsholders.

Basing a Civil Case on a Criminal Case

A civil case can either take the form of an independent case filed against an alleged infringer, or it can be filed in connection with an ongoing criminal case, using the evidence produced for that case. In such situations, the civil suit will be heard by the same judge who hears the criminal case. Concurrently, the major drawback of this procedure is that the civil lawsuit may be filed only against the criminal defendant and not against the company employing the defendant (since legal entities are not subject to criminal prosecution in Russia). Many rightsholders do not find it useful to bring civil cases against individuals in courts of general jurisdiction. Instead, they use either criminal verdicts or evidence collected in criminal cases as a basis to file civil lawsuits in arbitration courts against corporate infringers.

Damages vs. Compensation

A civil case that originates from a criminal case can result only in the awarding of damages to the plaintiff. A civil suit filed separately from a criminal case can provide compensation as well as an order to destroy infringing products. The appropriate strategy for a rightsholder may be to seek to initiate an administrative or criminal case in order to compile evidence of infringement, and then to initiate a civil case in order to obtain compensation and destruction of infringing products.

Ex-Parte Searches

Arbitration courts are also authorized to consider applications for ex-parte searches. By using such a procedure, copyright holders may collect and secure evidence on their own (i.e. without involving police). This procedure is very new to Russian courts, very complicated in terms of organization and not very well regulated by the law. Some rightsholders view it as a very useful, powerful and promising enforcement method, which, while it may not be applicable on a wide basis, can prove useful in certain large infringement cases.

Administrative Law Options

See administrative law options flowchart.

Remedies under the Russian Federation Code of Administrative Violations can be pursued against violations of copyright and neighboring rights, inventors' rights, patent rights, trademark rights, improper advertising and unfair competition involving intellectual property infringements. Penalties in administrative cases can include either fines or confiscation of infringing products and production equipment. Administrative law typically does not allow for destruction of equipment used in the infringing production.

Although fines are typically small (less than $1,000), some rightsholders prefer the administrative approach because cases are decided quickly, and they prefer to have a large number of small victories through the administrative route rather than seek a major success in a costly and time-consuming civil case.

Advantages

• Ability to effectively gather evidence
• Legal entities can be held liable
• Proceedings are brief (see chart)
• There is no need to prove the maount of damages suffered by the rightsholder
• Confiscation is available as a penalty for a number of offenses

Disadvantages

• Agencies authorized to handle administrative cases often lack resources to do so
• State agencies need to be interested in pursuing a case
• Rightsholders have no power to control the action in the case
• Jail sentences that may serve as a deterrent are not available

The following agencies are authorized to draft protocols on administrative offenses:

• Copyright and Neighboring Rights - police bodies and customs authorities
• Inventors and Patent Rights - police bodies and patent authorities
• Unlawful Use of Trademarks - police, customs, trade inspectors

See criminal law options flowchart.

Rightsholders can file petitions with law enforcement authorities to pursue criminal actions against IPR violators. However, they have no influence over the process, which often discourages them from pursuing this option.

Advantages

• Possibility to effectively gather evidence
• All proceedings are handled by a government agency
• Availability of deterrent criminal penalties
• Rightsholder has option to bring civil action in connection with criminal proceeding

Disadvantages

• Need to prove serious damages suffered by rightsholder
• High burden of proof to establish guilt
• Competent agency must be interested in taking action
• Low percentage of cases brought to court

Customs Watch List

Trademark owners should be sure to register their trademarks with Russia's Federal Customs Service, so that in the event of a seizure of counterfeit products, customs officers have the information needed to analyze the seized items and to contact representatives of the rightsholders.

IPR Legal Resources

(Note: ALL lists are provided only as a guide for U.S. companies or individual investors to identify firms in Russia that may be able to meet the specific needs of U.S. companies. The lists are not meant to be exhaustive, nor is it intended that inclusion on the list be construed as a U.S. Embassy endorsement or recommendation of the firms so listed. The U.S. Embassy assumes no responsibility for the professional ability or integrity of the persons or firms whose names appear on this list. The firms listed below are arranged in alphabetical order according to category and the order in which they appear has no other significance.)

(Note: Telephone dialing information when calling from outside of Russia: 7 is the country code for Russia, followed by 495, which is the city code for Moscow)

Baker & McKenzie
Sadovaya Plaza,
7 Dolgorukovskaya St.
Moscow 127006
7 495 787-2700
Email: info@bakernet.com

Clifford Chance
Sadovaya-Samotechnaya ul. 24/27
127051 Moscow
Tel: +7 501 258 5050
Fax: +7 501 258 5051

Ernst & Young
77 Sadovnicheskaya Emb., Bld. 1, Moscow, 115035, Russia
Phone: (495) 755-9700, 705-9749
Fax: (495) 755-9701
E-mail: Michelle.Moore@ru.ey.com

Euromarkpat
Maly Zlatoustinsky Per. d. 10, kv. 15
101000 Moscow
Tel.: +7 495 925 49 34
Fax : +7 495 928 81 87
E-mail: Euromarkpat@mtu-net.ru

Gorodissky & Partners
Bolshaya Spasskaya str., 25, stroenie 3
Moscow
Telephone: +7(495)937-61-16
Fax: +7(495)937-61-04;937-61-23
E-mail: pat@gorodissky.ru

Gowling Lafleur Henderson
14 Prechistensky Pereulok, Building 1, 4th Floor
Moscow 119034
Ph: +7-501-787-2070
Fax: +7-501-787-2071

Hogan & Hartson LLP
Prechistenskiy per., 14, Ambassador Building
Moscow
Tel: 7 (501) 487-0707
Fax: 7 (495) 797-9961
E-mail: pjpettibone@hhlaw.com

Innotec
B. Semenovskaya str., office 404, bld. 49
Moscow 107023
Telephone: (495) 737-6377, (495) 231-4826, (495) 366-9066
Fax: (495) 737-6366
E-mail: center@innotec.ru

Intels
Moscow, Novosloboidskaya ul. 26, bld. 1, entrance 2, office 410-411
Tel.: 926-59-85
Fax: 251-11-46
E-mail: info@uki.ru

IP pro
Moscow, st. Lobatchika, 17, office 610
Tel: 232-39-68; 234-08-44
Tel/Fax: 264-31-55
E-mail: ip@ipprolaw.com

Lovells
Voznesenskiy per., 22, Usadba Centre, 5th Floor
Moscow
Tel: 007-495-933-30-00
Fax: 007-495-933-30-01
E-mail: natalia.gulyaeva@lovells.com

Patent & Law Agency "Ermakova, Stoliarova & Partners"
4 Petroverigsky Per., 101990 Moscow
tel./fax: (495) 921-4728, 921-3158
E-mail: contact@pattrade.ru

Salans
Gazetnyi Pereulok, 17/9
125009 Moscow
Russian Federation
Tel: +7 (495 or 501) 258 3444
Fax: +7 (495 or 501) 258 3477

Sikaylo, Matveev, Gabbasov and Partners, Attorneys at Law
Malaya Bronnaya st. 32, Office 2
Moscow, 123001
Tel: 007-495-202-04-31; 202-01-67; 935-86-05
Tel/fax: 007-495-202-02-55
E-mail: vika@attorneys.mtu-net.ru

Sojuzpatent
Legal address: 5/2 Iliinka St., Moscow 103735, Russia
Postal Address: 13 Bldg. 5 Myasnitskaya St.,
101000 Moscow, K-9 GSP-9, 101999, Russia
Tel: +7 495 9251661; +7 495 9282261
Fax: +7 495 9249540; +7 495 9249543; +7 495 9219304
E-mail: info@sojuzpatent.com

Uskov & Partners
5 Gazetny pereulok
Moscow 125009
Tel: (495) 202-4145, 202-2240
Fax: (495) 229-8055, 229-2128
E-mail: msk@uskov.ru

Yust
Sivtsev Vrazhek Lane, 43
Moscow
Tel: 795-08-45; 795-32-72
Fax: 241-19-48
E-mail: seryogin@yust.ru