Effects of the war and the sanctions
The war against Ukraine has led to a series of international sanctions and Russian countermeasures. What do these sanctions mean for our customers and their IP Rights in Russia?
According to our Russian correspondent attorneys, there is currently no indication that Russia intends to nationalize, confiscate or annul the IP Rights of foreign owners.
Russia (as well as many other countries) has long provided for the state right to grant compulsory licenses (i.e. licenses to IP Rights without the consent of the owner) if the national emergency so requires. The following conditions apply to the justification of a national emergency in Russia:
- The patent must be about national security or the protection of public health AND there must be urgency.
- A compulsory license can only be decided by the government for each IP Right individually and for specific products.
- Compulsory licenses are granted to the owner of the property right in return for compensation determined by the state.
In the history of Russian patent law, only about 1 – 2 cases of such compulsory licenses are known to date. However, the compensation was not very high (approx. 0.5% of turnover).
Decree sets compulsory license fee to zero
In March 2022, the Russian government issued a decree that reduces the compulsory license fee for Patents, Utility Models and Designs to 0% if the owner of the IP Rights is a citizen of a so-called “unfriendly” country. This particularly affects the USA, the EU, South Korea, Japan and several other countries. However, the decree does not change the other conditions of the compulsory license. Thus, the decree must not be misunderstood to mean that anyone may freely use the Patents of an owner from a “listed country”, nor that the right to normal compensation for patent infringements is abolished.
Law of 08.03.2022 concerning “List of certain products”
The law gives the government the right to draw up a “list of products” for which protection of the “intellectual performance” or “individualization” contained in the product cannot be claimed. This list does not yet exist, nor is it clear exactly what the law means for the listed products. It is assumed that the aim is to legitimize imports.
Court decision on “Peppa Pig”
For the first time, a Russian court has ruled(https://www.worldipreview.com/article/peppa-pig-case-portends-russia-tm-retaliation) that the unlicensed use of the “Peppa Pig” Trademarks by Russian companies is permissible and does not entail damages. This decision is without precedent and it remains to be seen whether this will be the future line. In addition, however, there is another court decision on “Peppa Pig” which affirmed both an infringement of trademark law and damages.
In summary, the effects of the war and the international sanctions are critical. Although there is still no acute need for action, the situation can change quickly.
Do you have IP Rights in Russia and are you concerned about how to deal with your IP Rights? We are in contact with our Russian colleagues and will be happy to advise you.