Intellectual Property

The primary legislation regulating intellectual property in the Russian Federation was passed in 1992. This legislation includes laws on the protection of trademarks, software programs and databases, patents and topologies of integrated microcircuits. The Law "On Copyright and Neighboring Rights" (the Copyright Law) was passed in 1993 and revised in 1995. Significant amendments were made during 2002 and 2003 to the Law "On Trademarks, Service Marks, and Appellation of Origin of Goods" (the Trademark Law), the Patent Law, the Law "On Legal Protection of Software Programs and Databases" (the Software Law) and the Law "On Legal Protection of Topologies of Integrated Microcircuits." Any foreign legal entity or individual may use and seek protection of intellectual property rights in Russia under these laws, provided that the requirements of these laws are met. Russia is a signatory to several international treaties on intellectual property rights, including the Universal Copyright Convention, the Berne Convention for the Protection of Literary and Artistic Works, the Paris Convention for the Protection of Industrial Property, the Patent Cooperation Treaty, the Madrid Agreement on the International Registration of Trademarks and the Protocol to the Madrid Agreement.

An invention is defined as a technical solution in any field related to a product (which may include devices, substances, microbial strains, cell cultures of plants and animals) or a process. Patent protection is given to an invention if it is novel, inventive and industrially applicable. The maximum duration of patent protection for an invention is 20 years from the date of the application, subject to payment of annuities. The term of patents for inventions relating to a medicine, pesticide or agrochemical (the use of which is subject to obtaining special permission) may be extended at the request of the patent owner for a period not exceeding five years. The right to obtain a patent belongs to the inventor, his/her employer or their assignees. A patent application is filed with the Federal Service for Intellectual Property, Patents and Trademarks (Rospatent). A utility model is a technical solution pertaining to a device. Protection of a utility model is similar to that of an invention, with certain limitations and restrictions. A utility model may be granted patent protection if it is new and industrially applicable, for a period of five years from the date of filing of the application, which may be extended for an additional three-year period.

An industrial design is an artistic and design solution, which determines the external appearance of a product of industrial or handicraft origin. Patent protection may be granted for 10 years to any industrial design deemed to be new and original, and may be extended for additional five years.

Under Russian legislation it is possible to assign or license an invention, utility model and industrial design protected by a patent, to another person. Such assignment and license agreements must be registered with Rospatent, failing which they are deemed null and void.

A patent owner has the sole right of use of an invention, utility model or industrial design protected by such patent. The use of a patented object (including its importation, manufacture, application, offer for sale, sale, or other use or storage for a commercial purpose) without the patent owner‘s permission entails civil, administrative and/or criminal liability.

Under the Trademark Law, trademarks (service marks) are designations identifying the goods or services of legal persons and individual entrepreneurs. Legal protection of trademarks and service marks is granted by virtue of their registration with Rospatent or by virtue of international agreements to which the Russian Federation is a party. A mark may be represented by a word or words, pictures, three-dimensional signs and other designations or combinations thereof, and may be registered in any color or color combination.

Trademark and service mark protection is granted for a period of 10 years from the date of filing the application, and may be renewed during the last year of its validity for subsequent 10 year periods. A trademark or service mark registration will be cancelled on expiry of its term, if this has not been renewed. The legal protection of a trademark or service mark may be terminated on the request of any party if such a mark is not used for any uninterrupted period of three years from the registration date.

Any assignment or license of trademarks or service marks must be registered with Rospatent, failing which they are deemed null and void.

The appellation of origin of goods is a name which refers to a current or historical denomination of a country or other locality or a derivative of such denomination, which has become known as a result of its use with respect to goods specific to such locality.

The use of any designation which, through representing or containing the name of a locality, has entered into the public domain or become generic as a result of such usage but which does not, in fact, relate to the place of manufacture of such goods, is not deemed to be the appellation of the origin of such goods.

Legal protection is given to an appellation of origin based on its registration with Rospatent: An appellation of origin may be registered in the name of one or more persons, and a person or persons who have duly registered an appellation of origin may obtain a right to use such appellation, subject to such goods satisfying these criteria. The right to use an appellation may be granted to any legal or individual which produces the goods with the same specific features within the same territory.

An appellation of origin is protected for 10 years from the date of the application and may be renewed for subsequent 10 year periods. However an owner may not grant licenses for the use of the appellation of origin of goods.

Infringement of rights in a trademark, service mark or appellation of origin of goods entails civil, administrative and/or criminal liability.

Trade names are designations that identify or distinguish different legal entities in the fulfillment of their commercial activities.

Legal protection is provided under the Civil Code and legislation arising from this, as well as under the Paris Convention for the Protection of Industrial Property. An owner of a trade name is empowered to use its trade name, whether registered or not, and to prohibit the unauthorized use of a trade name.

The Copyright Law protects works of science, literature and the arts (copyright), and grants protection to the rights of performers, record and other media producers and organizations engaged in on-air or cable broadcasting (neighboring rights). Copyright protection arises by virtue of the creation of a work of art and does not entail any registration requirements.

The author of any work of art enjoys certain moral rights (the right of authorship, the right to recognition of his/her name, the right to public disclosure, the right of projection of the author's reputation) and proprietary rights (i.e. rights of reproduction, distribution, import, public demonstration, public performance, translation and revision etc.). Such moral rights are unalienable and may not be granted to third parties. Proprietary rights to the use of a copyrighted object may be granted by virtue of an exclusive or non-exclusive copyright agreement. Copyright is protected for the lifetime of the author and a further 70 years following death. Infringement of copyright entails civil, criminal and/or administrative liability.

Software Programs and Databases. The general provisions of the Copyright Law also apply to software programs and databases, while specific regulation is provided under the Software Law.

Software programs enjoy protection as literary works, while databases are protected as anthologies. Although registration is not mandatory for protection, an author may voluntarily register its software or database with Rospatent.

A software program or a database is protected for the lifetime of the author and a further 50 years following death. Proprietary rights to the use of a software program may be granted under a software license agreement, which may be exclusive or non-exclusive.

Topologies of Integrated Microcircuits. Legal protection is applicable to an original topology of an integrated microcircuit, developed as the result of an author's original work. An author enjoys the exclusive right to use the topology as he/she sees fit, including the right of prohibition of unauthorized use. Property rights in a topology may be transferred fully or partially to others under a written contract.

Although the registration of a topology is not mandatory for its protection, an author may voluntarily register with the appropriate agency. The exclusive right to the use of a topology is effective for 10 years from the date of its initial use or from the date of the topology‘s registration, whichever is earlier.

Under the Civil Code, information is regarded as an official or a trade secret if it is deemed to present an actual or a potential commercial value being unknown to third parties, if there is no free access to it on legal grounds, or if its owner takes active measures to protect its confidentiality. Persons who illegally obtain information containing an official or a trade secret or know-how may be liable for compensatory damages for any losses incurred as a result of their acquiring such information. Such liability also applies to employees who divulge an official or a trade secret in breach of a labor contract and to any party divulging such information in breach of a civil agreement.

Domain names are registered in Russia on a first-come, first-served basis, by several registrars.

Article by Eugene Arievich and Margarita Divina, Baker & McKenzie, Moscow