On December 1, 2011, INTA (through its Parallel Imports—EU Subcommittee and Anticounterfeiting—Eastern Europe & Central Asia Subcommittee) hosted a joint seminar with Hogan Lovells (CIS) and the Coalition for Intellectual Property Rights (CIPR) on “Parallel Imports and Trademark Protections in the Common Economic Zone of the Customs Union of Russia, Belarus and Kazakhstan.” This followed a November 2009 event, likewise sponsored by INTA, CIPR and Hogan Lovells, that focused on exhaustion of IP rights, parallel imports and counterfeiting in the region.
The purpose of the December 1 seminar in Moscow was to help attendees better understand trademark protection under the Customs Union and in light of potential legislative changes that would allow more favorable treatment of parallel imports in Russia, Kazakhstan and Belarus. The program also offered practical trademark protection strategies for addressing these challenges. More than 50 individuals attended the seminar, including INTA and CIPR members, and representatives of Russian state authorities.
Natalia Gulyaeva (Hogan Lovells (CIS)—Russian Federation) and Alexey Brevnov (CIPR Russia) opened the seminar, introducing INTA and CIPR and providing an overview both of current challenges and trends and of global measures to fight these challenges.
The first panel of the seminar addressed trademark protection and parallel imports in the Common Economic Zone of the Customs Union, highlighting possible legislative changes in Russia and existing law and practice in the European Union and the United States. The second panel focused on trademark enforcement in the Customs Union and dealt with law and practice in Russia, Kazakhstan and Belarus. Ms. Gulyaeva moderated both panels.
Philip Barengolts (Pattishall McAuliffe—USA) and Yuri Bolotov (BMF Legal Group, LLP—Kazakhstan) joined the seminar via video link to deliver presentations on parallel imports in the United States and customs measures for IP protection in Kazakhstan.
Ewen Mitchell (Rouse—UK) spoke on “Parallel Trade in the EU.” Anton Bankovsky (Hogan Lovells (CIS)—Russian Federation) gave an overview of Russian aspects of trademark protection by customs bodies of the Customs Union; this was followed by Veronika Shipitsa and Darya Lando (LexPatent—Belarus), who reported on legal provisions and practical aspects of trademark protection in Belarus.
On December 7, INTA once again teamed with CIPR, and also with Baker & McKenzie (CIS), in holding a roundtable on well-known marks in Russia. More than 100 individuals attended the event, which was held at the Russian Federal Service for Intellectual Property (Rospatent) in Moscow. The distinguished panel of speakers provided attendees with an in-depth look at how well-known marks are addressed both in Russia and internationally.
INTA’s participation was organized through its Famous & Well-Known Marks—Eastern Europe & Central Asia Subcommittee, chaired by Gordana Pavlovic (Cabinet Pavlovic—Belgrade and Brussels). The subcommittee, part of the Association’s Policy Development and Advocacy Group, has gathered information on the latest status of famous marks protection, registry details and relevant cases in the region and developed a comprehensive chart to summarize its research.
Subcommittee member Eugene Arievich (Baker & McKenzie (CIS)—Russian Federation), who is also active in CIPR, moderated the event, while Ms. Pavlovic provided a detailed overview of INTA’s role in promoting the protection of well-known marks both across the world and within the region.
Past INTA President Frederick Mostert (Richemont—UK) addressed international core principles in this area. He was followed by Lyubov Kyriy (Deputy Director of Rospatent), who spoke on the office’s practice in regard to well-known marks and relevant legislation.
Michael Treis (Baker & McKenzie—Switzerland) outlined recent European case law on well-known marks, including the Davidoff, INTEL, Pago and Bellure decisions. Nancy Omelko, Attorney/Advisor (Trademarks) of the Office of the Administrator for Policy and External Affairs of the U.S. Patent and Trademark Office, then explained the U.S. approach to protecting well-known marks against bad-faith trademark filings. Vladislav Starzhenetsky (Supreme Arbitrazh Court of Russia) continued the discussion with an overview of the Court’s experience with well-known marks.
The event was concluded by the remarks of Dr. Boris Simonov, Director General of Rospatent. Noting that Russia is still a young country in terms of protecting IP rights, Dr. Simonov encouraged practitioners to make suggestions and recommendations and to continue to engage in discussions with Rospatent so that Russia can move toward its goal of further harmonization of IP rights protection with other jurisdictions.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2012 International Trademark Association