Russia's mixed record of intellectual property rights (IPR) protection and enforcement remains the most significant obstacles in its negotiations to join the WTO. On 13-14 October the US-Russia Bilateral IPR Working Group met in Moscow to continue negotiations to resolve outstanding issues to meet the requirements of the TRIPS Agreement.

As expected, copyright protection, particularly for optical disks, and counterfeit pharmaceuticals were the major focus of the US-Russia Bilateral IPR Working Group meeting. Prior to the talks, CIPR briefed the US delegation on important trademark protections issues, including concerns on the application of the law regarding the requirements for attaining well-known trademark status in Russia, steps to reduce bad faith trademark registrations through enacting formal opposition procedures, and to amend laws to conform to the March 2005 WTO Panel decision on geographic indications. CIPR also discussed these issues with Rospatent.

"The US-Russia Bilateral IPR Working Group set the stage for important follow-up actions by both countries to address key trademark and copyright protection issues," said CIPR CEO Peter B. Necarsulmer.

The US delegation reported follow-up actions from the talks would continue through the balance of the year and into 2006. CIPR will continue to work with the US decision-makers and their Russian counterparts during this period.

On Monday, 17 October, at a meeting of the Foreign Investors Advisory Council, Minister of Economic Development and Trade German Gref told investors Russia is making good progress on IPR protection, but more needs to be done, especially in enforcement. He hopes all outstanding WTO issues will be resolved by the end of the first quarter of 2006.

The pressure on the Russian Government to fill gaps in IP legislation and improve enforcement has been intense. The Russian government has responded to concerns about deficiencies in the RF Administrative and Customs Codes, as well as the Law on Trademarks, with a flurry of legislative amendments.

On 2 May 2005, the Presidential Administration passed an Order to establish a working group to draft part four of the Civil Code before the end of the year, which will establish new, unified provisions on industrial property and copyright laws. The working group has met twice weekly since 6 September and includes some of Russia's most prominent legal experts.

The working group will release its first draft of part four of the Civil Code later this year and the RF government will organize hearings to receive public comments on the proposal. CIPR will monitor this process and participate in the public hearings. We will update CIPR members on all major developments.

Currently, Russian trademark law does not provide for the refusal of a GI if it conflicts with a prior existing trademark. A March 2005 WTO Panel Report requires that geographic indications that conflict with prior trademarks must be denied protection.

CIPR is advocating for the enactment of "First in time, First in right." amendments to bring the RF Law on Trademarks and Appellations of Origin into compliance with Article 16.1 of TRIPS, and will lobby for amendments in the State Duma by the end of the year.

A major breakthrough to help customs officials stop the flow of counterfeit goods entering and leaving Russia was recently achieved. CIPR is happy to report that our work over the past three years to add a provision for "ex officio" to the RF Customs Code has reached a new stage. The Federal Customs Service, which had previously opposed this change, has altered its official position and is now in favor of the amendment, which provides customs agencies with the power to act on their own initiative (ex officio) and suspend the release of goods if intellectual property rights are being violated. CIPR will work to get the draft amendment adopted in the nearest future.

Since last year, CIPR has been working with its State Duma allies to pass amendments to Article 180 of the RF Criminal Code to modify the requirements for a trademark owner to win a conviction against a counterfeiter. This amendment will be discussed on 15 November meeting of the RF Governmental Commission to Prevent Infringements in the Sphere of IP. The current language in Article 180 requires proof that a counterfeiter has repeatedly committed the violation and has caused substantial financial damage to the plaintiff. The proposed amendments would remove the requirement to prove a counterfeiter is a repeat offender and sets a minimum value for the income received by the violator, an amount that has yet to be determined. The amendments are gaining legislative supporters and we hope it will be passed before the end of the year.

CIPR will continue provide results of US-Russia bilateral negotiations on IPR and provide regular updates on legislative and policy developments, and our work with Russian government officials to improve Russia's IP regime.

Published by the Coalition for Intellectual Property Rights
Copyright © 2005 The PBN Company. All rights reserved.
The Coalition for Intellectual Property Rights (CIPR) is a private-public partnership dedicated solely to protecting and enforcing intellectual property rights in the CIS countries and the Baltic States. Through legislative initiatives and lobbying, coalition building, enforcement actions, public awareness, and opinion and economic research, CIPR assists governments and IP owners to establish transparent IPR regimes that adhere to international standards. For additional information, please visit the CIPR website at www.cipr.org or contact CIPR's Washington, DC or Moscow offices at +1 202 466-6210 (U.S.), or +7-095-775-0077 (Russia).