The war against Ukraine has led to a series of international sanctions and Russian countermeasures. What do these sanctions mean for our clients 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 owner's consent) if the national emergency so requires. The following requirements apply to establish a national emergency in Russia:
The patent must be about national security or 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 issued in exchange for compensation to the IP right holder as determined by the government.
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 (about 0.5% of the turnover).
Decree sets compulsory license fee to zero
In March 2022, the Russian government issued a decree that reduces the amount of the compulsory license fee for patents, utility models and designs to 0% if the owner of the intellectual property rights is a citizen of a so-called "unfriendly" country. The countries affected are in particular the USA, the EU, South Korea, Japan and some others. However, the decree does not change the other requirements for 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 damages for patent infringement is abrogated.
Law of 08.03.2022 concerning "List of Certain Products".
The law gives the government the right to establish a "list of products" for which the protection of the "intellectual achievement" or "individualization" contained in the product cannot be claimed. Neither does this list already exist, nor is there any clarity as to what exactly the law means for the listed products. The presumption is that it is about legitimizing 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" trademark by Russian companies is permissible and does not entail compensation for damages. This decision is without precedent and it is open whether this will be the future line. In addition, however, there is another court decision on "Peppa Pig", which has affirmed both infringement of trademark rights and compensation for damages.
In summary, the effects of the war and the international sanctions must be considered critical. Although there is no acute need for action yet, the situation can change quickly.
Do you have property rights in Russia and are you concerned about the further handling of your property rights? We are in contact with our Russian colleagues and would be happy to advise you.