Bringing to administrative responsibility for the illegal use of means of individualization on the basis of Article 14.10 of the Code of Administrative Offenses of the Russian Federation

Why is protection so important?

The definition of a trademark is contained in Article 1477 of the Civil Code of the Russian Federation. This is a designation necessary to individualize a company and its products. A trademark can be very different: words, images, a combination of two instruments, three-dimensional elements, sound. The audio trademark is usually used by radio companies. In some states, even fragrances can be registered as a trademark. This is suitable for perfume companies.

Multinational corporations have a real need to register a mark. It is the products of these corporations that are most often counterfeited. But small startups should also think about registration. A small company can quickly gain momentum in its activities, and its products will be counterfeited. A competing company will earn on reputation without investing anything in advertising.

What does registration give?

Registration of a trademark provides the following opportunities:

• Use of the mark on almost all media: manufactured goods, websites, domain name, documents.
• Possibility of transferring the right to use a trademark to another legal entity or individual.
• Use as collateral for lending.
• Protecting your mark from attacks by competitors.

If representatives of the company see that the mark is being used by another company, they can go to court.

The procedure for its legalization

You need to start by developing a sketch. Then you should contact the Federal Patent Office - Rospatent, collecting the entire package of documents:

• Application for registration;
• Sketches;
• A list of goods, generated in accordance with the International Classification of Standards, which will be labeled with this brand;
• Brand designation on paper;
• Receipt for payment of state duty.

The issued certificate is the result of state registration, as well as the basis for protection against unfair competition. The certificate is valid for 10 years and can be extended upon expiration.

Methods of protecting a trademark

To protect a trademark, you need to register it. This can be done at the Federal State Budgetary Institution “FIPS” (this is a branch of Rospatent). The mark must be registered in the area where it will be used. The registration process takes 12-15 months. The validity period of the sign is 10 years. It can be renewed an unlimited number of times. If the company will operate, including abroad, it is necessary to undergo international registration. It is needed for protection on the territory of other states.

IMPORTANT! If a company has registered a mark in Russia, this will not automatically become a guarantor of protection in other countries. The right of ownership is valid only in the country in which it originated.

Before sending an application to Rospatent, you need to check whether the selected mark is used by anyone else. Matches can be found using the Rospatent database. This database consists of 500,000 characters. If the rights to a mark belong to another company, then it cannot be registered. Match checking is performed by the patent office. Its representatives compare the logo/name with the database. This allows you to eliminate all matches.

The copyright holder has the authority to control the use of the mark by third parties under these circumstances:

• Labeling products, packaging, advertising media.
• Use of a trademark as a service mark.
• Indication in the documents accompanying the release of products into circulation.
• Use of a trademark in promoting products or services.
• Use on social networks, domain, email.

A person who has rights to a mark cannot restrict the use of a mark if it is used for personal purposes by individuals who do not pursue profit-making purposes. Penalty cannot be imposed on persons who use signs in agreement with their owner.

FOR YOUR INFORMATION! Registration of a mark does not guarantee that competitors will not use it. But if the use of a trademark is detected, the entrepreneur can quickly respond to the violation. To do this, it makes sense to first send a letter of complaint, and then, if the offending company does not react in any way, go to court.

Methods of protecting a mark

Protection of rights involves actions in the event that the fact of use of a registered mark is discovered. They can lie in different planes.

Civil method

To initiate a case for trademark protection, you need to apply to arbitration courts. If both parties want to start a case, you can go to arbitration. To contact the authority, you need to fill out an application. It must contain requirements. For example, these are the following requirements:

• Stopping illegal use of a trademark.
• Compensation for losses arising from illegal use of the mark.

It should be taken into account that it is usually very difficult to establish the amount of damage caused due to the unlawful use of a mark. Therefore, the plaintiff can turn to an alternative method of defense - demanding compensation. The amount of compensation can vary from 10,000 to 5,000,000 rubles. The corresponding provision is contained in subparagraph 1 of paragraph 4 of Article 1515 of the Civil Code of the Russian Federation. If the plaintiff seeks payment of compensation, it is not necessary to determine the amount of damages.

Another method of protection is the publication of the court decision in the media. This is necessary to restore the business reputation of the company.

The courts have the power to decide these issues:

• Protection of the exclusive right to a trademark.
• Execution of an agreement on the transfer of rights to use a trademark.

You can apply to the arbitration court when agreements related to the use of a trademark provide for exactly this procedure.

Administrative method

There are the following administrative methods:

• Sending an objection to the Patent Term Chamber.
• Submitting an application for violation of competition norms to the Antimonopoly authority.
• Submitting a complaint to the structure that manages the work of the offender.

Administrative methods take quite a long time to implement. The statement of violations must be accompanied by documents confirming the plaintiff’s rights to the mark.

Protection through customs authorities

The help of customs authorities should be sought when the unlawful use of a mark is associated with the import or export of products from the Russian Federation. The procedure in this case will be regulated by the Regulations on the Protection of Rights established by Order of the State Customs Committee No. 1199 of October 27, 2003.

Criminal prosecution

A violator of someone else's trademark may be subject to criminal liability. They are prosecuting her on the basis of Article 180 of the Criminal Code of the Russian Federation. Paragraph 1 provides these penalties for the unlawful use of someone else's trademarks:

• Fine 100,000-300,000 rubles or correctional labor for up to 2 years.
• Imprisonment for up to 24 months with fines up to 80,000 rubles.

If the crime was committed by a group of people or an organized group, the responsibility will be more serious.

Criminal liability is imposed if the offense results in major damage. Its size, according to Article 169 of the Criminal Code of the Russian Federation, is 1,500,000 rubles. Such damage may occur in the following circumstances:

• Sales of wholesale quantities of counterfeit goods.
• The company that owns the trademark has lost its influence on the sales market.
• Lost profit.

FOR YOUR INFORMATION! Criminal liability is imposed extremely rarely for the use of a trademark. There is no corresponding judicial practice, it is difficult to prove the amount of damage.

Certification for marketplaces

What documentation is needed?

The goal of any marketplace is to ensure that only safe, high-quality products are sold on the trading platform. Sellers bear full responsibility for the quality of the goods. Before posting on the platform, they are required to ensure that the product complies with all applicable safety regulations.

Permits required for selling on marketplaces:

1. Declaration or certificate of conformity. A legal document in which a manufacturer formally declares that a product meets health, safety and environmental regulations. DOC is mandatory for any product subject to CE marking legislation.

2. Certificate of state registration. The document is issued at the territorial office of Rospotrebnadzor for individual products that comply with CTS decision No. 299. Products that are subject to mandatory registration with the SGR:

• household chemicals;
• food products;
• polymer and synthetic materials;
• tobacco products;
• paints and varnishes;
• alcoholic drinks;
• Dietary supplements and others.

3. Rejection letter. Filled out in free form on the form of an accredited body. It can include the entire volume of goods that the seller produces. The cost of creating a refusal letter is 3,000 - 5,000 rubles.

To complete the documents you must have:

• application of the established form;
• constituent and registration documents;
• information about the product indicating the composition, technical characteristics, scope of application, materials from which it is made;
• samples for analysis in the laboratory;
• normative and regulatory documentation (GOST, TU);
• Delivery contract.

Features of the preparation of a report on laboratory tests of goods

Laboratory testing is required to verify product compliance.

A few key design points:

1. The product SKU must match. You cannot submit a test report for Product A as a laboratory test report for Product B.
2. Ideally, the report should be issued in the name of the company. Otherwise, it may be difficult to prove that the document is applicable to your specific product.
3. The report should cover all the mandatory standards for your product, not just one or two.
4. Reliable testing company. Not all testing companies have a solid reputation; it is important to use the services of trusted organizations

Which products must have a declaration of conformity and how to obtain it

Products for which a declaration is required:

• any medical device;
• measuring instruments;
• construction products;
• gas appliances;
• pyrotechnics;
• explosives for civilian use;
• cable cars and ski lifts;
• car equipment;
• non-automatic weighing instruments;
• individual protection means;
• electrical equipment;
• radio equipment;
• hot water boilers;
• pressure equipment;
• toys.

If the declaration is not available or is invalid, the seller is required to recall the product. Otherwise, he will be fined and may even face imprisonment. The declaration of conformity is kept for 10 years from the date of placing the last product on the market, unless the relevant CE directives provide for a different period.

The CE mark on a product indicates the presence of appropriate technical documentation which confirms the use of the certification mark.

Products prohibited from being placed on marketplaces are weapons, explosives, dangerous items, surveillance equipment, electronics recycling. The recalled products are also not authorized for sale.

Procedure for obtaining a declaration:

1. Find an authorized laboratory.
2. Submit the product for research.
3. Pay for the service provided.
4. Receive a protocol with the results.
5. Select the appropriate product group on the European Commission website.
6. Create a DOS.
7. Enter data about the document on the Rosakcreditation website.
8. Apply the EAC designation to the label.

The format and content of the DOS should follow a specific structure to make it easier to understand. The declaration usually includes the following elements:

1. Name and legal address of the product manufacturer or authorized representative.
2. Identification that allows the product to be tracked. For example, serial number or model number, or type identification.
3. Information about the authorized body.
4. A statement that the manufacturer assumes full responsibility for the product's conformity with specifications.
5. List of all applicable directives and CE regulations to which the product complies.
6. List of all harmonized EN standards or methods used to verify product compliance with directives.
7. Manufacturer's name and signature.
8. Place and date of issue of the DOS.
9. Any additional information.

A declaration of conformity is a simple way to confirm the fulfillment of contractual and other technical requirements imposed by the buyer on a product.

Documents of compliance are required on all marketplaces, including Wildberries

The most common mistake sellers make is that they send a DOS that does not match the test report. The SKU, company name, and listed testing rules and standards must match the information in the testing report.

The independent assessment procedure for the seller and consumer is a sign of stability, safety and quality of the product.

The need and benefits of certification

The need for product certification may arise for one or more of the following reasons:

1. Sellers strive to strengthen their reputation, expand their markets, increase competitiveness, and promote new products.
2. Buyers want assurance of the quality of the products they purchase.
3. Consumer health and safety legislation requires products to bear a certification mark.

Product certification conducted by third-party independent certification bodies is most acceptable to buyers, importers and regulators.

Many national standards bodies provide product certification services to third parties. These include the affixing of a certification mark to the product along with a national standard reference number used as a criterion for testing the product.

Main benefits of certification:

• the possibility of supplying products to the Eurasian Economic Union and the European Union;
• improving the company's image;
• growth of consumer trust and loyalty through independent assessment of the quality of goods and services provided;
• fulfillment of contractual requirements of consumers and investors;
• additional advantage when participating in tender procedures.