Intellectual Property Protection in the Area of Customs Regulations
Round Table Discussion Report
(within the framework of the Expopriority’2009
International Forum on Intellectual Property)

On 8-10 December Moscow played host to the 1st International Forum on Intellectual Property Expopriority’2009. The event was organized by the Russian Chamber of Commerce and Industry and Expocentre Fairgrounds.

Among other major goals, the Forum aimed to forge industrial ties between Russia’s regions, to draw investments to the projects developing high technologies, to encourage more commercial contracts and license agreements to be concluded, to create a database of innovations and to support professional development of intellectual property (IP) specialists managing innovations.

The Forum featured a Congress on protection and security of intellectual property (IP) rights and the International Exhibition of the Latest Scientific and Technical Achievements. Among the topics on the programme were license trade, and dual-use product and technology transfer.

The Forum attracted 205 organizations and individual inventors. The officials participating in the working sessions represented such organizations as the World Intellectual Property Organization, specialized regional organizations and national patent offices of the most developed countries, of the International Association for the Protection of Intellectual Property (AIPPI), the Licensing Executives Society International (LES), Russian Society of Inventors and Innovators (VOIR), as well federal ministries and agencies. There also were representatives of large Russian and foreign companies, medium and small businesses, as well as individual inventors and entrepreneurs from Russia and abroad.

Intellectual Property in the Area of Customs Regulations round table discussion became the focal event of the third day of the Forum. The round table was organized with Expocentre’s assistance by the Work Group on IP rights of the State Duma Expert Council for Customs Regulations and by the ‘Customs & Corporate Lawyers’ Lawyers Office - the Partner of and the official counsel for the Forum. The Congress was held in consideration of serious attention devoted to IP protection in Russia and the world, as well as of the influence of the general level of IP protection on the development of innovative and entrepreneurial activity in Russia.

The main discussion points at the round table were efforts to fight counterfeit goods by means of customs regulations; intellectual property protection after enactment of the Customs Code of the Customs Union; export control; and legal regulation of the international license trade.

The round table attracted over 60 delegates from Russian and foreign companies, and featured speakers from the Federal Customs Service, the Expert Council for Customs Regulations of the State Duma Committee on Budget and Taxation, the Export Control Department of the RF Ministry of Justice Federal Agency for Military, Special and Dual-use Intellectual Property Protection, and the Federal Institute of Industrial Property.

The IP protection system is now facing two major tasks: the fight against counterfeiting and piracy, and harmonization of Russian legislation with rules of international law.

In this connection the following issues were suggested for discussion at the round table:

The report on the work of the Federal Customs Service to protect of IP rights was delivered by Oleg Ashurkov, a member of the Department for the Control over the Flow of Goods and Information Resources Protected by IP Rights of the Federal Customs Service Trade Restrictions, Currency and Export Control Directorate. The topical challenge facing the authorities was protection of IP rights within the Customs Union of Belarus, Kazakhstan and Russia. Part of the Customs Code of the Customs Union governing IP protection comprised three national IP registries, and the unified registry to protect intellectual property throughout the Customs Union was going to be compiled. One of the main tasks was to harmonize national legislations of the Customs Union member states on IP protection.

The Russian Federal Customs Service is designing a law under the tentative title ‘On Customs Regulation’. This law will comprise issues that have not been included in the Customs Code of the Union and will be governed by national legislation. And in the first place it concerns legislative recognition of the ex officio principle.

Robert Vaskanyan spoke on measures available for right-holders to protect their IP rights and on the role of the Federal Institute of Intellectual Property in the IP protection system. He said that there was serious concern regarding the Customs Union. It was necessary that the Union Customs Code was drawn up with reference to the experience of the European countries and a single trademark registration covering all member states of the Union was established.

Each country has its own national trademark registry, and the owner of one and the same trademark can differ from country to country. Consequently, the question arises about how to manage conflicts between identical trade marks on the markets of Russia, Belarus and Kazakhstan.

Rospatent (Russian Patent Office) examines application for trademark registration using the Russian trademark registry without reference to the national databases of Belarus and Kazakhstan and takes a decision in accordance with the Russian law. The Patent Offices of the other two countries act the same way. For that reason conflicts may arise between trademarks registered in these three countries.

Marina Lyakisheva, Customs Law Counsel of DLА Piper Rus Limited delivered a detailed report on creation of the Customs Union of Belarus, Kazakhstan and Russia and enactment of the Union Customs Code.

IP protection issues related to export control were highlighted by Andrey Shchetinin, Head of the Export Control Department of the Russian Ministry of Justice Federal Agency for Military, Special and Dual-Use Intellectual Property Protection.

The discussion during the round table was very active. Every report aroused many questions, which brought about hot debates. This helped to work out specific solutions to various challenges and to single out issues that should be managed by Government.

The round table addressed various aspects of international efforts to prevent export and import of counterfeit goods, to fight IP right infringements, and to tackle trouble spots of so-called parallel import. It also brought about issues relating to protection of the IP rights belonging to Russian right-holders and to the Russian Federation at large, when products protected by IP rights are exported. Another key discussion topic was the Customs Code of the Customs Union, which is going to be enacted on 1 July 2010. According to the delegates and speakers, it was very important to discuss challenges and share experience on the issues as it would help to avoid possible mistakes in the future.

The final part of the Forum featured a visiting session of the Work Group on IP rights of the State Duma Expert Council for Customs Regulations. The session addressed issues of IP protection after enactment of the Customs Code of the Customs Union of Belarus, Kazakhstan and Russia. It was attended by authorized representatives of leading international law firms and companies involved in international trade, right-holders and IP specialists. The delegates to the session drew attention to the necessity of studying the IP law enforcement experience of Kazakhstan and Belarus, analyzing the compliance of the Russian IP legislation to the Union Customs Code and tackling problematic aspects of parallel import.

The session resulted in a decision to continue the work on issues relating to the protection of right-holders when the goods protected by IP rights are exported from or imported to the Customs Union; and to analyze sore points in relations among right-holders within the Customs Union in order to harmonize national legislations of the Union member states on intellectual property protection.