Customs IP register: Effective border protection mechanism
Russia's Federal Customs Service (FCS) offers an effective tool for trademark owners to prevent the cross-border movement of counterfeit goods - the Customs IP Register. This register enables proactive monitoring and detention of infringing goods at the border before they reach the domestic market.
Why Inclusion in the Customs IP Register Matters
Being listed in the Register allows customs officials to detain goods suspected of infringing intellectual property rights by stopping counterfeits before entering Russia. Rights holders receive immediate notification of such detentions and are given the opportunity to take legal action.
Registration gives rights holders a proactive enforcement mechanism. Customs officers are trained to recognize specific trademarks and apply a tailored enforcement strategy using the data provided during registration.
Scope of Protection
The Customs IP Register primarily applies to trademarks but also extends to appellations of origin, geographical indications, and copyright. In practice, the system is most frequently used for trademarks, particularly in sectors vulnerable to counterfeit trade, such as fashion, electronics, automotive, pharmaceuticals, etc.
Customs protection applies only to commercial cross-border trade, not to goods already in the domestic market or personal imports.
Duration of Inclusion
A trademark may be included in the Customs IP Register for a maximum period of three years. However, the inclusion period cannot exceed the term of legal protection of the trademark itself. The term of customs protection may be renewed upon request, provided the trademark remains valid.
How to Register a Trademark in the Customs IP Register
Inclusion requires a detailed application and supporting documentation, which is reviewed by the FCS. Below is a breakdown of the required documentation and related procedures. There are no official government fees charged for recording a trademark in the Customs IP Register. The standard processing time for inclusion is approximately 2-3 months from the date of application.
Required Documentation: Full Breakdown
1. General Corporate and Legal Documentation
Power of Attorney (POA)
- Must be signed by a person authorized to represent the rights holder, with proof of that authority.
- The POA must include the full name and position of the signatory.
- All delegated rights must be listed in full. If any powers are omitted, a new notarized and apostilled POA may be required.
- This document authorizes a representative to liaise with customs, handle detentions, and manage procedural steps, including insurance.
Trademark Certificates and Supporting Documents
- For Russian national trademarks: a copy of the registration certificate, as well as certificates showing changes (e.g., ownership, name, address) or renewals issued by Rospatent, along with data about assignment, license, or franchise agreements (if any).
- For international trademarks (Madrid system):
- a copy of the registration certificate and the certified extract from WIPO (attestation) along with data about assignment, license, or franchise agreements (if any).
- A certified extract from WIPO (attestation) must be issued no earlier than one month before the application filing date.
- Documents not written in Russian must be accompanied by a notarized Russian translation from a certified local translator.
Company Incorporation Documents
- A certificate of incorporation or company registry extract confirming the legal status of the trademark owner.
- Must reflect any changes to name or address.
- These documents must be notarized, apostilled, and accompanied by a notarized Russian translation.
- They must be issued no earlier than one month before the application filing date.
Obligation Letter
- A mandatory written undertaking from the rights holder to compensate for any property damage that may be caused to the declarant, owner, consignee of goods, or other third parties due to the suspension of goods release by customs.
Liability Insurance Agreement and Insurance policy
- An insurance agreement and an insurance policy covering the rights holder's liability for damages caused by wrongful detention. Required to cover potential liability to third parties in connection with customs enforcement measures.
- The insured amount must be at least 500,000 RUB.
- The premium to be paid to an insurance company is calculated individually on a case-by-case basis.
- The POA can authorize the representative to arrange the insurance through a licensed Russian insurer.
2. Information About Genuine Goods and Authorized Importers
Tax Certificate (INN) and Company Registration (OGRN)
- Required for each authorized importer.
- Scanned copies are sufficient.
Authorized Trade Routes
- Not mandatory, but recommended.
- A list of regular trade and logistics routes used for genuine imports helps customs distinguish legitimate shipments.
Harmonized System (HS) / TN VED Codes
- Customs tariff classification codes for each category of genuine goods covered by the trademark.
- Facilitates identification of relevant shipments during border inspections.
3. Information About Counterfeits and Known Infringements
Visual Guide for Differentiation
- A comparative presentation (e.g., PowerPoint or PDF), preferably including:
- side-by-side images of original and counterfeit products,
- labeling, packaging, security elements, and other distinguishing features.
- Such guides are strongly recommended and are treated as confidential.
Known Infringers and Trade Channels
- A list of known or suspected counterfeiters, including:
- importers/exporters,
- sales channels (online/offline),
- previously targeted individuals or companies,
- market enforcement history.
Photographic and Documentary Evidence of Counterfeiting
- Customs authorities require evidence of counterfeit goods circulating in Russia.
- Acceptable documentation includes:
- police or customs seizure reports with images;
- stamped invoices or receipts from local sellers, with accompanying product photos;
- screenshots or online listings showing counterfeits offered to Russian consumers;
- results of test purchases or market investigations conducted by rights holders or investigators.
Where no evidence is readily available, such material can be gathered via local investigations or online monitoring.
Customs Actions Upon Detection of Counterfeits
When customs officials detect goods suspected of infringing a registered IP right:
- They suspend the release of the shipment for up to 10 working days (extendable by another 10).
- The rights holder is immediately notified and may inspect the goods.
- If infringement is confirmed, the rights holder may:
- Request the customs to initiate an administrative case in court and support them as a third (interested) party.
- Request seizure and destruction of the goods;
- Participate in customs enforcement and expert examination procedures.
Administrative proceedings typically result in fines and forfeiture of goods. If the court rules in favor of the rights holder, the counterfeit items must be confiscated and destroyed.
Parallel Imports and Civil Enforcement
Although customs measures focus on clear cases of counterfeiting, the inclusion in the Register can also be used to detect unauthorized parallel imports. Although customs cannot take administrative actions related to these shipments, the rights holder can bring civil litigation.
In particular, the rights holder may:
- File a civil lawsuit against importers of unauthorized genuine goods (parallel imports);
- Claim monetary compensation in an amount between 10,000 and 5,000,000 RUB, or twice the price of the infringing goods.
This strategy may be used by rights holders in sectors where exclusive distribution networks or territorial licensing agreements are in place.
Conclusion: A Strategic Enforcement Tool
The Customs IP Register provides an essential enforcement mechanism for rights holders operating in Russia. It enables early interception of infringing goods, facilitates legal action, and supports broader brand protection efforts.
By preparing a thorough and well-documented application, trademark owners gain a cost-effective, border-based enforcement tool that can deter infringers, disrupt counterfeit supply chains, and support both administrative and civil legal proceedings.