U.S. Consulate

IPR Toolkit

Market-Entry Planning

Copyright

Protecting U.S. intellectual property should be a primary concern of U.S. firms when planning their market entry strategy into the Russian market. A well-developed, comprehensive IPR strategy should include registering IPR with relevant agencies, controlling it and most importantly, enforcing it. At a minimum, such a strategy should include the following:

• Registration -- Under international law, copyrights do not have to be registered in order to be protected; however, similar to the U.S., registration is also possible in Russia with the Russian Author's Association. Unlike patent and trademark protection, rightsholders need not register to obtain copyright protection for their works. The copyrights exist and are entitled to protection from the moment of artistic creation. Nevertheless, an author or copyright holder can formalize their ownership by getting the copyrighted work notarized. Also, for a fee, a government registration can be made through the Russian Author's Society (RAO). Both of these actions are advisable in order to assist with possible future enforcement actions.
• Control -- Do not allow control of your copyright to fall into the hands of your agents or distributors. Make sure you:
  • incorporate copyright protections into contracts and marketing strategies
  • enter into written and enforceable contracts that require agents, suppliers, distributors and employees to protect your copyright
  • refuse to assign or license your copyright until you fully understand the consequences
  • make certain that your rights in the copyright remain with you upon termination of the assignment, license, transaction or investment
• Protection -- If you discover that your copyright has been violated, immediately take action to protect and enforce your rights. Hiring legal counsel, informing the proper authorities, initiating investigations, raids, seizures as well as civil litigation, administrative proceedings and criminal prosecutions are some of the tools available. Before deciding which tool(s) to use, however, you should ask the following preliminary questions:
  • Is the copyright registered or otherwise protectable in Russia?
  • Is the harm being caused in Russia or overseas?
  • What is the source of the harm? Competitors, employees, agents or contractors?
• Professional Advice -- Engage the assistance of legal professionals with both Russian and IPR expertise early in the process, particularly if your product is software or optical disk related, and involve them in the development of your overall Russian business strategy. Membership in anti-counterfeiting organizations can also be helpful.

Patent

It is essential that any U.S. company considering introducing intellectual property into Russia should begin working with lawyers well in advance of market entry (please refer to the "Law Firm/Consultant Listing" in the Reference Materials section below). Companies considering doing business in Russia or with Russian entities should consider making an inventory of their intellectual property, proprietary and other sensitive information (including that owned by affiliated companies) and developing plans for the protection of each type.

In addition to applying for patents, assigning any patent rights, and licensing technology as appropriate, companies should evaluate the risks posed by contractual relationships. A significant number of intellectual property disputes in Russia arise between companies doing business together. As a result, companies should utilize non-disclosure agreements in negotiations and contracts, identify and restrict disclosure of all technical data only to those who have a "need to know" and compartmentalize knowledge. Simply keeping proprietary information in a secure location or leaving it only with the most reliable employees may also safeguard some forms of information such as tools, dies, or formulae. Confidentiality obligations may also need to be extended to board members, employees, agents, and the like who have actual or potential access to marketing plans.

U.S. companies should also conduct an intellectual property "due diligence", by reviewing the Russian market for existing infringements of their rights and studying the experiences of similar companies in Russia. Moreover, companies should ensure that they are familiar with relevant Russian rules and regulations, especially those that may contrast with the U.S. Licensors should consult qualified counsel to determine how much of a license must be recorded to ensure the licensor's rights are not compromised.

Trademark

New market entrants should develop a strategy for protecting their company's intellectual property early in the planning stages of doing business in Russia. Registration of trademarks before the product enters the stream of commerce in Russia is the primary means of ensuring that the mark is eligible for protection under Russian law, and ensuring that trademark infringement can be remedied through either administrative or judicial proceedings.

Prevention -- The best weapon is prevention. Be clear of your rights before your product crosses the border into Russia. Use every legal means available to mitigate the risks from the start, including:

• Register your trademark in Russia
• Develop and register a Russian language version. If you do not create a Russian mark, the market will do so, creating a Russian "nickname" for your product. Your company may not like the image this mark projects, or someone else in Russia may like it so much they register it in their own name, forcing you to "buy it back"
• Register your trademarks in neighboring countries both for potential expansion and to block others from registering marks to use on products consumers may confuse with yours
• Conduct a survey to identify potential products infringing your trademark or products bearing a trademark confusingly similar to yours but registered by another party
• Establish a corporate system for monitoring the marketplace for infringing products
• Engage the services of a trademark agent or law firm to monitor Rospatent's website which lists all current trademarks by reference number. To review a listing of numbers, please visit here

Protection -- If you discover that your trademark is being infringed, act immediately to protect and enforce your rights. Investigations, raids, seizures and well as civil litigation and criminal prosecutions are some of the tools available. Before deciding which tools to use, ask the following preliminary questions:

• Is the trademark registered or otherwise capable of being protected in Russia?
• Is the harm in Russia or overseas?
• What is the source of the harm? Competitors, employees, agents or contractors?

Professional Advice -- Engage the assistance of legal professionals with both Russia and IPR expertise early in the process, and involve them in the development of your overall Russian business strategy. Membership in anti-piracy organizations can also be of assistance.