Intellectual property · Issue No. 1, 2023

Yu. Kazanskaya. Customs Register of Intellectual Property Objects (TROIS)

Customs Register of Intellectual Property Objects (TROIS)

This is a kind of database that includes objects of:

• copyright,
• related rights,
• trademarks,
• service marks,
• appellations of origin of goods
• and, soon, geographical indications, created to prevent the import and putting into economic circulation in the territory of the Russian Federation of counterfeit goods

Inclusion in TROIS, for example of trademarks, creates an additional barrier for legitimate business, protecting such bona fide companies from the unlawful use of trademarks directly at the moment of import of potentially counterfeit goods.

Intellectual property objects are entered into TROIS by the Federal Customs Service (FCS)

The FCS of Russia is the federal executive authority that, in accordance with the legislation of the Russian Federation, performs:

• functions of control and supervision in the field of customs affairs;
• functions of a currency control authority;
• functions of protecting rights to intellectual property objects;
• functions of transport control at checkpoints across the State Border of the Russian Federation, as well as sanitary-quarantine, phytosanitary quarantine control and state veterinary supervision in terms of checking documents at specially equipped checkpoints across the State Border of the Russian Federation designated for these purposes (specialized checkpoints);
• functions of identifying, preventing and suppressing crimes and administrative offenses within the competence of the customs authorities of the Russian Federation, as well as other related crimes and offenses (clause 1.2 of Order of the Federal Customs Service of September 4, 2018 No. 1380 "On Approval of the Regulations of the Federal Customs Service").

The customs authorities of the Russian Federation have a defined structure and are located throughout the territory of the Russian Federation, which makes it possible to carry out customs monitoring in all border customs zones:

Steps required for inclusion in TROIS

Since the procedure for inclusion in TROIS is neither automatic nor mandatory, to initiate it the applicant must send the corresponding application to the FCS and attach a certain set of documents. The algorithm itself and the list of documents are set out in the Administrative Regulations (Order of the FCS of Russia of 28.01.2019 No. 131 "On Approval of the Administrative Regulations of the Federal Customs Service for the Provision of the State Service for Maintaining the Customs Register of Intellectual Property Objects" (Registered with the Ministry of Justice of Russia on 06.06.2019 No. 54861).

In particular, the right holder (or its representative) must send the following documents to the FCS:

• An application for inclusion of the IP object in the Register. The application is filed for each IP object separately.
• Information on the state registration of the legal entity or sole proprietor (for example, an extract from the EGRUL/EGRNIP, the Unified State Registers of Legal Entities/Sole Proprietors). If the right holder is a foreign legal entity, an original extract from the commercial register of companies of the relevant jurisdiction is required.
• Information on the persons authorized by the relevant title document to interact with the customs authorities on matters of taking measures to protect rights to the IP object.
• Information on the IP object, in particular on the trademark. As a rule, it is sufficient to provide information on the documents confirming the existence of exclusive rights. The FCS has the right to obtain the relevant information through interagency cooperation between the FCS and Rospatent. However, in the case of including a trademark protected in the Russian Federation under an international registration, the FCS must be provided with an extract from the international register of trademarks certified by WIPO (the World Intellectual Property Organization).
• Information on contracts for the alienation of the exclusive right, transfer of the right, license (sublicense) agreements, and commercial concession agreements.
• An undertaking by the right holder to compensate for property damage that may be caused to the declarant, owner, recipient of the goods or other persons in connection with the suspension of the release period of the goods (a civil liability insurance contract of the right holder).

Also, if there are persons (authorized importers) who have the right to import goods marked with trademarks subject to inclusion in TROIS, such a list must also be provided.
It should be noted that, with the introduction of the electronic document management system, the entire set of documents can be submitted electronically by registering a personal account on the website of the FCS of the Russian Federation. This is convenient and shortens the time it takes for documents to arrive, which may be especially relevant for regional right holders. At the same time, documents can be sent on paper directly to the FCS of the Russian Federation building

Terms

The period for considering an application submitted to the FCS is one month, after which the FCS either decides to include the mark in TROIS, or sends a request to the right holder (its designated representative) about the need to provide additional or clarifying information. The total period for considering an application for inclusion does not exceed three months. The period of inclusion of an IP object under current legislation is three years, taking into account the validity periods of the documents submitted.

Thus, if the term of the exclusive right to a trademark expires in two years, the FCS will most likely enter the marks not for three years but for two, in the absence of other grounds for refusal. At the same time, an application for extension of the term may be filed with the FCS no later than two months before the end of the current customs registration.
In the course of checking the documents, the FCS will also check the term of validity of the exclusive right to the trademark, so it is important to make sure that the mark has been renewed on time and remains in force.

After the marks have been successfully included in TROIS, information about them can be viewed on the official website of the Federal Customs Service (in Russian):

We would add that, when drawing up lists of goods subject to customs monitoring, one must be guided by the list registered by Rospatent. The wording must match that indicated in accordance with the ICGS classes (International Classification of Goods and Services) and taking into account the codes of the TN VED (Commodity Nomenclature of Foreign Economic Activity). Given the complexity of the medical device field, instructions and booklets of various kinds for the customs authorities are welcome, as they allow them to more effectively identify potentially counterfeit products imported into the territory of the Russian Federation.

How TROIS works

From the moment a mark is included in TROIS, the customs authority begins to track any shipments containing goods marked with trademarks included in the customs register, as well as with designations similar to such trademarks, and in the following cases suspends the release of goods for ten working days:

• the declared goods are present on the list of goods for customs monitoring;
• the importer is not named in the list of authorized persons;
• the importer has not provided a document confirming the right to import the declared goods;
• the risk management system (RMS) has been triggered.

As soon as a consignment of goods is suspended, the customs authority sends a Notice of Suspension of the Release of Goods to the authorized representatives of the right holder indicated in TROIS. Within the 10-day period, the right holder must respond to the customs authority as to whether the imported goods are counterfeit,
and if the goods are confirmed to be counterfeit, the right holder has the right to send the customs authority an application to bring the importer to administrative liability under Article 14.10 of the Code of Administrative Offenses. Such an offender faces a fine and confiscation of the counterfeit goods with their subsequent destruction. In such cases the right holder acts as a third party, and the plaintiff is the customs authority.

It is worth noting that, if we are talking about goods imported without the consent of the right holder, that is, parallel import, the right holder has the right to apply to the Arbitration Court to recover compensation from the infringer in its own favor.
In this case the customs authority will play the role of a "barrier", leaving the right holder the right to take further action to protect its intellectual rights. Speaking of medical devices, it can be assumed that in many cases it is more advantageous and safer for the importer to conclude a license agreement. In this case TROIS will play the role of a kind of intermediary that will inform the right holder not only of the fact of import but also provide the importer's contact information, and provide the importer with information about the right holder. This will enable the parties to reach agreements, which will not only legalize the import of original goods and legalize the market as a whole, but also spare the parties costly and unnecessary litigation. In addition, the absence of dubious goods of the manufacturer will increase the reputation of the right holder.

Regulatory legal acts used in preparing this article

• Order of the Federal Customs Service of September 4, 2018 No. 1380 "On Approval of the Regulations of the Federal Customs Service"
• Federal Law of 03.08.2018 No. 289-FZ (as amended on 19.12.2022) "On Customs Regulation in the Russian Federation and on Amendments to Certain Legislative Acts of the Russian Federation"
• Order of the FCS of Russia of 28.01.2019 No. 131 "On Approval of the Administrative Regulations of the Federal Customs Service for the Provision of the State Service for Maintaining the Customs Register of Intellectual Property Objects" (Registered with the Ministry of Justice of Russia on 06.06.2019 No. 54861)
• Code of Administrative Offenses of the Russian Federation of 30.12.2001 No. 195-FZ (as amended on 28.02.2023)

Author of the article: Yulia Kazanskaya

Specialization and experience:

• Protection and defense of IP objects in the Russian Federation, the CIS, Asia, Africa, Latin America, and others.
• Representing companies' interests in disputes over the registration of rights to trademarks, over infringement of the exclusive right to trademarks and copyright objects, and participation in domain dispute projects.
• Protection of intellectual rights against the actions of manufacturers of counterfeit products who flood the Russian markets with products illegally marked with clients' trademarks.

Other articles · Issue No. 1, 2023