Illegal use of a trademark without the permission of the copyright holder: liability, court proceedings for violation of someone else's exclusive copyrights Justice

ST 180 of the Criminal Code of the Russian Federation.

1. Illegal use of someone else’s trademark, service mark, appellation of origin of goods or similar designations for homogeneous goods, if this act was committed repeatedly or caused major damage, -

shall be punishable by a fine in the amount of one hundred thousand to three hundred thousand rubles, or in the amount of the wages or other income of the convicted person for a period of up to two years, or by compulsory labor for a term of up to four hundred eighty hours, or by corrective labor for a term of up to two years, or by forced labor for a term of up to two years. up to two years, or imprisonment for a term of up to two years with a fine in the amount of up to eighty thousand rubles or in the amount of the wages or other income of the convicted person for a period of up to six months.

2. Illegal use of warning markings in relation to a trademark or appellation of origin of goods not registered in the Russian Federation, if this act was committed repeatedly or caused major damage, -

shall be punishable by a fine in the amount of up to one hundred twenty thousand rubles, or in the amount of the wages or other income of the convicted person for a period of up to one year, or by compulsory labor for a term of up to three hundred and sixty hours, or by corrective labor for a term of up to one year.

3. Acts provided for in parts one or two of this article, committed by a group of persons by prior conspiracy, -

shall be punishable by a fine in the amount of two hundred thousand to four hundred thousand rubles, or in the amount of the wages or other income of the convicted person for a period of eighteen months to three years, or by forced labor for a term of up to four years, or by imprisonment for the same term with a fine of up to one hundred thousand rubles or in the amount of wages or other income of the convicted person for a period of up to one year or without it.

4. Acts provided for in parts one or two of this article, committed by an organized group, -

shall be punishable by a fine in the amount of five hundred thousand to one million rubles, or in the amount of the wages or other income of the convicted person for a period of three to five years, or by forced labor for a term of up to five years, or by imprisonment for a term of up to six years with a fine of up to five hundred thousand rubles or in the amount of wages or other income of the convicted person for a period of up to three years or without it.

Note. In this article, major damage is defined as damage the amount of which exceeds two hundred and fifty thousand rubles.

What does it mean?

A trademark is a designation that serves to individualize the goods of a legal entity or individual entrepreneur, certified by a trademark certificate (Article 1481 of the Civil Code of the Russian Federation).

Service mark is a designation used to individualize the work performed by specified persons or the services provided by them.

Illegal use means the use on the territory of the Russian Federation of a corresponding designation or one similar to it (to the point of confusion) without the permission of the copyright holder.

According to part 1. Article 180 of the Criminal Code of the Russian Federation is subject to illegal use:

trademark;
service mark;
appellation of origin of goods or similar designations for homogeneous goods.

Legislation applicable to this type of offense:

Civil Code of the Russian Federation (Articles 1229, 1231, 1233, 1252, 1477, 1488, 1489, 1490, 1503);
Code of Administrative Offenses of the Russian Federation (Article 14.10);
Criminal Code of the Russian Federation (Article 180).

Composition of the crime and qualifying characteristics

A qualified crime is the commission of those specified in Art. 180 of the Criminal Code of the Russian Federation of acts by a group of persons by prior conspiracy or by an organized group. An important condition is the commission of a criminal act repeatedly or the resulting large damage.

The table examines the elements of criminal and administrative acts.

Composition of a criminal act	Composition of an administrative offense
An object	A regulated procedure for the use of means of individualization in the form of trademarks and service marks, as well as names of places of origin of goods. The procedure for marking a trademark not registered in the Russian Federation or the place of origin of goods.	Organization of business activities.
Objective side	Illegal (without permission) use of someone else’s mark, appellation of origin of goods or similar designations. Illegal use of markings of a trademark not registered in the Russian Federation or the place of origin of the goods.	Illegal use of exclusive rights to means of individualization of unauthorized persons. Encroachment on exclusive rights in relation to trade mark, service mark and name of place of origin of a service or product.
Subject	The subject of this offense is a person who has reached the age of 16, is adequate and of sound mind.	Individuals. Officials. Legal entities.
Subjective side	The subjective side is associated with the direct or indirect intent of using someone else’s brand.	The subjective side is associated with the direct or indirect intent of using someone else’s brand.

Criminal Code of the Russian Federation in the latest edition:

Article 180 of the Criminal Code of the Russian Federation. Illegal use of means of individualization of goods (works, services)

3. Acts provided for in parts one or two of this article, committed by a group of persons by prior conspiracy, -

4. Acts provided for in parts one or two of this article, committed by an organized group, -

Note. In this article, major damage is defined as damage the amount of which exceeds two hundred and fifty thousand rubles.

Return to contents: Criminal Code of the Russian Federation in the latest edition

Types of using someone else's technical knowledge without the permission of the copyright holder

It can be difficult to understand when exactly wrongdoing occurs. Below are the most common cases of violation of the law in the form of the use of counterfeit goods or infringement of exclusive rights:

Release of products under someone else's mark, the copyright holder of which did not give his consent. As an example, we can cite almost any market product, where under one or another brand of clothing there is something hidden that is far from original.
Advertising and sale of goods under someone else's technical specifications. There was a Louis Vuitton restaurant in South Korea, and a clothing brand has the same name.
Using a sign to place it on documentation that accompanies the movement of goods. Let's turn again to markets where, under the guise of original Adidas clothing, people promote their items.
Placing someone else's mark on advertising images in order to increase sales of their products. As an example of a violation, we can cite any public catering service that often uses Macdonalds’ technical specifications to advertise its business.
Use by the violator of the original technical specification to advertise their products or services on the Internet.

Types of liability

Civil

According to Article 1515 of the Civil Code of the Russian Federation, the following penalties are provided for offenders:

The copyright holder has the right to demand the withdrawal from circulation and destruction of the counterfeit at the expense of the offender - the offender is obliged to comply with the requirements. If the holder of exclusive rights demands compensation, the amount of the fine varies from 10 thousand rubles to 5 million. There is also the option of collecting compensation from the violator, the amount of which is twice as much as the cost of the technical work.

Offenses in relation to trademarks not registered in Russia are qualified under Art. 180 of the Criminal Code of the Russian Federation.

Administrative

According to Article 14.10 of the Code of Administrative Offenses of the Russian Federation, the following penalties are provided for offenders:

For individuals – penalties from 5 to 10 thousand rubles. Also, all counterfeit goods will be confiscated from the violator.
For officials - from 10 to 50 thousand rubles. Counterfeit goods are also subject to confiscation.
For organizations – from 50 to 200 tr. Counterfeit goods are also subject to confiscation.

If the offender decides to produce a product with the aim of using it for his own purposes, then in this case the penalty is increased:

For individuals, the fine will be 2 times the price of the counterfeit product. All goods, materials and means of production are also confiscated.
Officials will pay a fine three times the value of the counterfeit, with confiscation of all goods.
For organizations, the fine is 5 times greater than the counterfeit, also including its confiscation.

Criminal

According to paragraphs 1 and 2 of Art. 180 of the Criminal Code of the Russian Federation, the following penalties are provided for an offense if it is committed repeatedly or causes major damage.

Major damage, according to Art. 180 of the Criminal Code of the Russian Federation, amounts to an amount exceeding 250 thousand rubles.

For illegal use of someone else's mark:

a fine of 100 to 300 thousand rubles is issued or all wages that the culprit could have received for 2 years are confiscated;
compulsory work up to 480 hours;
sent to correctional or forced labor for up to 2 years;
arrest and subsequent imprisonment of the offender for up to 2 years, with payment of a fine of up to 80 thousand rubles, or confiscation of his salary, which the culprit could have received for 6 months.

For illegal use of markings of a trademark not registered in Russia:

a fine of up to 120 thousand rubles is issued or all the salary that the culprit could receive for the year is confiscated;
compulsory work up to 360 hours;
correctional labor for up to 1 year.

If the same acts were committed by a group of persons or by conspiracy, then other penalties follow:

a fine in the amount of 200 thousand to 400 thousand rubles or in the amount of the salary or other income of the convicted person for a period of 18 months to 3 years;
forced labor for up to 4 years;
imprisonment for up to 4 years with a fine of up to 100 thousand rubles, or confiscation of the offender’s salary, which he could have received for 1 year.

If the offense was committed by an organized group of persons, then a separate penalty is provided for this:

fine from 500 tons to 1 million rubles. or in the amount of salary or other income of the convicted person for a period of 3 to 5 years;
forced labor for up to 5 years;
imprisonment for up to 6 years with a fine of up to 500 thousand rubles or in the amount of the salary or other income of the convicted person for a period of up to 3 years.

Damage is considered major when its amount exceeds 250 thousand rubles.

Second commentary to Art. 180 of the Criminal Code of the Russian Federation

1. The basic concepts are set out in the Resolution of the RF Supreme Court of April 26, 2007 No. 14 “On the practice of courts considering criminal cases of violation of copyright, related, inventive and patent rights, as well as illegal use of a trademark.”

2. The subject under Part 1 of Art. 180 of the Criminal Code are:

1) someone else's trademark;

2) someone else's service mark;

3) someone else’s name of place of origin of the goods (hereinafter referred to as AO);

4) designations similar to them for homogeneous goods.

3. Items under Part 1 of Art. 180 of the Criminal Code must be:

1) strangers to the guilty person;

2) registered in our country.

Designations similar to trademarks, service marks, and trademarks for homogeneous goods are designations that are identical or similar to other people’s marks and names to the point of confusion with them. For example, Panasonix instead of Panasonic - for radio equipment; Gillello instead of Gillette - for razor blades; Culgate instead of Colgate for toothpaste; and so on.

4. The subject under Part 2 of Art. 180 of the Criminal Code is a warning marking in relation to a trademark or innovative product not registered in the Russian Federation (in accordance with the Civil Code, it is called a trademark protection mark or a trademark protection sign). To notify about his exclusive right to a trademark, the right holder has the right to use a protection sign, which is placed next to the trademark, consists of the Latin letter “R” or the Latin letter “R” in a circle - ® or the verbal designation “trademark” or “registered trademark sign" and indicates that the designation used is a trademark protected in the territory of the Russian Federation (Article 1485 of the Civil Code).

5. The objective side of the crimes provided for in Part 1 and Part 2 of Art. 180 of the Criminal Code, consists of the illegal use of objects of a crime if the act was committed repeatedly or caused major damage.

6. Repeatability within the meaning of Part 1 of Art. 180 of the Criminal Code presupposes the commission by a person of two or more acts consisting of the illegal use of a trademark, service mark, trademark or similar designations for homogeneous goods. In this case, there may be either repeated use of the same means of individualization of a product (service), or the simultaneous use of two or more foreign trademarks or other means of individualization on one unit of goods. In relation to Part 2 of Art. 180 of the Criminal Code, repeated illegal use of warning markings in relation to a trademark or an innovative product not registered in the Russian Federation is recognized two or more times (clause 15 of the 2007 resolution).

7. In material terms, the crime is completed from the moment of causing major damage (exceeding two hundred and fifty thousand rubles, note to the article).

8. The subjective side is characterized by an intentional form of guilt. When using warning labels under Part 2 of Art. 180 of the Criminal Code, the offender must know that the trademark or appellation of origin has not been registered in the Russian Federation.

9. The subject is individuals, individual entrepreneurs, managers and ordinary employees of legal entities, regardless of the form of ownership, legal form and purpose of activity, citizenship and other characteristics.

10. Qualified squads are provided for in Part 3 and Part 4 of the article.

Where should I contact?

If it happens that the copyright holder has recorded the use of his TK, then he can contact the following authorities:

Ministry of Internal Affairs You should file an application to initiate a criminal case for illegal use of technical knowledge, as well as to the district offices of the Prosecutor's Office of the Russian Federation.
Court. You need to go to court based on Articles of the Civil Code of the Russian Federation 1484 “Exclusive right to a trademark” and 1515 “Responsibility for the illegal use of a trademark.
Antimonopoly Service. You can contact it in accordance with Article 39 of the Federal Code of July 26, 2006 N 135-F3 (as amended on October 5, 2015) “On the Protection of Competition.” If there is a fact of advertising a product brand with a stolen brand.
Send a complaint to the territorial bodies of the Federal Service for Supervision of Consumer Rights.

Pre-trial claim for copyright infringement

There may be several grounds for claims. For example, violation of a copyright agreement, which is not so difficult. Or here’s another example: a person took a photo from a third-party resource, and not from the author’s resource, and there is no indication that the photo is not the author’s. This will also be considered copyright infringement.

The claim itself does not have any specific form. It is written in any form and may look like a complaint.

The content of the claim must be formatted as follows:

Name of the addressee and his place of residence.
Name and address of the author of the claim.
Part that includes confirmation of authorship, as well as information directly indicating copyright infringement.
Calculation of the amount that the author requires for the violation.
For reference: the claim does not necessarily have to be of a material nature; it may happen that the author will only need to remove his content from a third-party resource.
The amount of moral damage, if the author thinks there is one.
The operative part, which includes a statement of demands in a concise form, for example, “I demand that the facts of violation of my copyright be eliminated and that I be compensated for material damage in the amount of 100,000 rubles.”
There should be an “applications” section where the author indicates documents proving his claims.

We do not recommend completing the documents yourself. Save time - contact our lawyers by phone:

8 (800) 302-76-94

Commentary to Art. 180 Criminal Code

1. The subject of the crime in Part 1 of Art. 180 of the Criminal Code are: trademark, service mark, place of origin of goods or similar designations for similar goods (see Chapter 76 of the Civil Code of the Russian Federation). Designations similar to trademarks, service marks, and the name of place of origin of goods for homogeneous goods are designations that are identical or similar to other people’s marks and names to the extent of confusion (clause 22 of the Resolution of the Plenum of the Supreme Court of the Russian Federation dated April 26, 2007 No. 14 “ On the practice of courts considering criminal cases of violation of copyright, related, inventive and patent rights, as well as illegal use of a trademark”).

Legal protection of a trademark, service mark and appellation of origin of goods is carried out on the basis of their state registration, for which a certificate is issued in the name of a legal entity or individual entrepreneur, which certifies the exclusive right of its owner to this mark (name) in relation to the goods and services specified in the certificate.

A trademark (service mark) is considered alien if it is registered in the name of another person and is not assigned under an agreement in relation to all or part of the goods, or the right to use which is not granted by the owner of the trademark to another person under a license agreement.

2. Illegal use means the use on the territory of Russia of a corresponding designation or similar to it (to the point of confusion) without the permission of the copyright holder (clauses 18 - 21 of the Resolution of the Plenum of the Supreme Court of the Russian Federation of April 26, 2007 No. 14).

3. Criminal liability for illegal use occurs only in cases where this act was committed repeatedly or caused major damage (over 250 thousand rubles).

Repeated behavior presupposes the commission by a person of two or more acts consisting of the illegal use of a trademark, service mark, appellation of origin of goods or similar designations for similar goods. In this case, there may be either repeated use of the same means of individualization of a product (service), or the simultaneous use of two or more foreign trademarks or other means of individualization on one unit of goods. Placing someone else's trademark on items included in one batch of manufactured goods constitutes a continued act that is not repeated.

4. To notify about his exclusive right to a trademark (service mark, etc.), the right holder has the right to use a protection sign, which is placed next to the trademark (appellation of origin of the product) and consists of the Latin letter R or the Latin letter R in a circle or the verbal designation “trademark” or “registered trademark” (“registered appellation of origin” or “registered appellation of origin”) and indicates that the designation used is a trademark (appellation of origin), protected and registered in the territory Russian Federation.

This warning marking is the subject of a crime under Part 2 of Art. 180 CC.

Disputes in court and recovery of compensation

The first instance through which cases regarding this offense pass is the arbitration court (Article 27 of the Arbitration Procedure Code of the Russian Federation). The Intellectual Property Rights Court considers cases only at the cassation stage, if the case so requires. The Supreme Court of the Russian Federation in such cases acts as a supervisory body.

Statement of claim

Before filing a claim, you should ensure that the form and content comply with the official regulations. All claims for illegal use of a trademark should be formalized as follows:

Full name of the judicial authority to which the application is being submitted.
Information about the defendants in this case and the plaintiff.
Title of the case (for example, “Statement of Claim for Illegal Use of a Trademark”).
A reasonable description of the violation and the defendant's response.
Competent presentation of all requirements.
References to the articles of civil and civil procedure legislation necessary for this case.
If property claims are made - the full cost of the claim.
List of attached documents.

We do not recommend completing the documents yourself. Save time - contact our lawyers by phone:

8 (800) 302-76-94

Documents and evidence

The fact of violation must be established and proven by the copyright holder himself, while the law does not place any restrictions on the evidence provided. Exceptions are acts that have signs of a criminal offense.

Evidence can be considered:

counterfeit products with illegally placed foreign trademarks - the court is provided with acts of seizure of counterfeit products or the fact of purchase at retail outlets;
goods sold outside the territory designated by the license agreement;
agreement on temporary transfer of rights;
payments that confirm incomplete payment for the use of a trademark;
conclusion of experts, which indicates the fact that the technical specification is similar to the original;
photos, videos, etc.

Before filing a claim, you need to systematize all the documents available in the case. All parties to the conflict, including the third party (if any), must be familiar with the contents of the documents. Before filing an application, the plaintiff must pay a fee to the state.

Documents include:

title documents;
contracts;
acts;
invoices;
payment documents;
correspondence between the parties regarding the dispute, etc.

If there are no necessary attachments to the application, this may lead to a complete refusal of the claim or termination of the case.

To apply to the arbitration court, the parties need to confirm their legal status with relevant documents (certificate of registration, extracts from state registers of legal entities and individual entrepreneurs in relation to the plaintiff and defendant).

Compensation amount

The copyright holder, according to Art. 1515 of the Civil Code of the Russian Federation, has every right to request material compensation for the violation. The plaintiff has a choice when filing claims (Article 1252 of the Civil Code of the Russian Federation):

compensation for losses and possible benefits, the calculation of which falls entirely on the shoulders of the plaintiff;
suppression of the offender’s actions;
seizure of material media;
compensation, the limits of which are established in the legislation of the Russian Federation (Article 1515 of the Civil Code of the Russian Federation).

Costs and processing time

Legal costs in cases of illegal use of trademark are considered after payment of the state fee. The amount of the state duty depends on the value of the claim, since these cases have the status of property (Article 333.21 of the Tax Code of the Russian Federation). The terms of consideration depend on the complexity of the case, but the law states that they cannot exceed six months (in especially complex cases - nine).

The speed of receiving compensation depends on the financial situation of the defendant and the work of the FSSP.

Article 180. Illegal use of means of individualization of goods (works, services)

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Criminal Code of the Russian Federation
Article 180. Illegal use of means of individualization of goods (works, services)

(name as amended by Federal Law of December 31, 2014 N 530-FZ - Collection of Legislation of the Russian Federation, 2015, N 1, Art. 83)
1. Illegal use of someone else’s trademark, service mark, appellation of origin of goods or similar them designations for similar goods, if this act was committed repeatedly or caused major damage -

3. Acts provided for in parts one or two of this article, committed by a group of persons by prior conspiracy, -

(Part three was introduced by Federal Law of November 17, 2001 N 144-FZ - Collection of Legislation of the Russian Federation, 2001, N 47, Art. 4404; as amended by Federal Law of July 3, 2016 N 325-FZ - Collection of Legislation of the Russian Federation , 2016, N 27, article 4258)

4. Acts provided for in parts one or two of this article, committed by an organized group, -

(Part four was introduced by Federal Law No. 325-FZ of July 3, 2016 - Collection of Legislation of the Russian Federation, 2016, No. 27, Art. 4258)

Note. In this article, major damage is recognized as damage the amount of which exceeds two hundred and fifty thousand rubles (note introduced by Federal Law No. 530-FZ of December 31, 2014 - Collection of Legislation of the Russian Federation, 2015, No. 1, Art. 83).

Commentary on Article 180

This article provides for criminal liability for the commission of two acts that differ from each other only in the object of the attack.

Object

crime under Part 1 of Art. 180 of the Criminal Code of the Russian Federation, is the established procedure for using a trademark, service mark, appellation of origin of goods and similar designations for homogeneous goods, and the crime provided for in Part 2 of Art. 180 of the Criminal Code of the Russian Federation - the established procedure for the use of warning markings in relation to a trademark or appellation of origin of goods not registered in Russia.

The main normative act regulating in the Russian Federation the legal protection of the results of intellectual activity and equivalent means of individualization of goods, works, and services is the Civil Code of the Russian Federation.

Issues of legal protection of the exclusive rights of a citizen or legal entity are also regulated by the Convention for the Protection of Industrial Property (Paris, March 20, 1883) <1>, which classifies trademarks, service marks, trade names and indications of places of origin of goods as objects of industrial property protection.

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<1> The Stockholm Act of the Paris Convention was signed on behalf of the USSR on October 12, 1967 and ratified by the Decree of the Presidium of the Supreme Soviet of the USSR dated September 19, 1968 // Gazette of the USSR Supreme Soviet. 1968. N 40. Art. 363.

According to Art. 1229 of the Civil Code of the Russian Federation, a citizen or legal entity that has an exclusive right to a result of intellectual activity or a means of individualization (right holder) has the right to use such a result or such a means at its own discretion in any way that does not contradict the law. The copyright holder may, at his own discretion, permit or prohibit other persons from using the result of intellectual activity or means of individualization. Using the result of intellectual activity or means of individualization without the consent of the copyright holder is illegal.

A trademark is a designation used to individualize goods, and a service mark is a designation intended to individualize the work performed by legal entities or individual entrepreneurs or the services they provide (Article 1477 of the Civil Code of the Russian Federation).

The owner of the exclusive right to a trademark and service mark can be a legal entity or an individual entrepreneur. This right must be registered by the federal executive body for intellectual property in the State Register of Trademarks and Service Marks of the Russian Federation in the manner established by the Civil Code of the Russian Federation (Articles 1503 - 1507). A certificate is issued for a registered trademark and service mark, which certifies their priority and exclusive right in relation to the goods and designations specified in the certificate.

Verbal, figurative, dimensional and other designations or combinations thereof, in any color or color combination, can be registered as trademarks.

The owner of a trademark and service mark can transfer the right to use these means of individualization on the basis of an agreement on the alienation of the exclusive right to a trademark (Article 1488 of the Civil Code of the Russian Federation) and a license agreement on granting the right to use a trademark (Article 1489 of the Civil Code of the Russian Federation), which must be registered with the federal executive body for intellectual property (Article 1490 of the Civil Code of the Russian Federation).

The appellation of origin of a product to which legal protection is granted is a designation that represents or contains a modern or historical, official or unofficial, full or abbreviated name of a country, urban or rural settlement, locality or other geographical feature, as well as a designation derived from such a name and which became known as a result of its use in relation to a product, the special properties of which are exclusively or mainly determined by the natural conditions and (or) human factors characteristic of a given geographical object (Article 1516 of the Civil Code of the Russian Federation). For example, “Essentuki”, “Gzhel”, “Khokhloma”, “Fedoskino”, “Tula gingerbread”.

The exclusive right to use the appellation of origin of goods on the territory of the Russian Federation is recognized and protected by virtue of state registration of such name and is certified by a certificate, provided that the goods produced by these persons have the specified special properties. The procedure for state registration of the appellation of origin of goods is regulated by the Civil Code of the Russian Federation (Articles 1522 - 1534). The name of the place of origin of the goods can be registered by one or more citizens or legal entities (paragraph 2, paragraph 1, article 1518 of the Civil Code of the Russian Federation).

In accordance with paragraph 4 of Art. 1519 of the Civil Code of the Russian Federation, disposal of the exclusive right to the appellation of origin of a product, including by alienating it or granting another person the right to use this name, is not allowed (except for the case specified in paragraph 2 of clause 2 of Article 1518 of the Civil Code of the Russian Federation).

The use of designations that are confusingly similar to means of individualization for homogeneous goods is not allowed (clauses 4 - 8 of Article 1483 and clause 3 of Article 1519 of the Civil Code of the Russian Federation). For example, Panasonix instead of Panasonic - for household appliances.

In accordance with paragraph 22 of the Resolution of the Plenum of the Supreme Court of the Russian Federation dated April 26, 2007 N 14 “On the practice of courts considering criminal cases of violation of copyright, related, inventive and patent rights, as well as illegal use of a trademark” <1> to similar Identical designations should also be included (clause 9 of Article 1483 of the Civil Code of the Russian Federation).

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<1> RG. 2007. May 5.

Products, labels, packaging of goods on which trademarks, designations, appellations of origin of goods or designations confusingly similar to them are illegally used are counterfeit.

Warning marking is a designation in the form of “R” or the Latin letter “R” in a circle (R), the verbal designation “trademark”, “registered trademark” or “registered appellation of origin”, “registered appellation of origin”, indicating registration in the Russian Federation of a trademark or appellation of origin of goods (Articles 1485 and 1520 of the Civil Code of the Russian Federation).

Objective side

the crime is expressed in the action of: illegal use of someone else’s trademark, service mark, appellation of origin of goods or similar designations for homogeneous goods, warning markings in relation to a trademark or appellation of origin of goods not registered in Russia; subsequently in the form of major damage; in a causal connection or this act was committed repeatedly. The main issues related to the interpretation of the signs of the objective side and the qualification of the act are disclosed in the said Resolution of the Plenum of the Supreme Court of the Russian Federation dated April 26, 2007 No. 14:

a) a trademark (service mark) is considered alien if it is registered in the name of another person and is not assigned under an agreement in relation to all or part of the goods, or the right to use which is not granted by the owner of the trademark to another person under a license agreement (paragraph 3, paragraph 16 );

b) under the illegal use of someone else’s trademark, service mark or similar designations for homogeneous goods in relation to Part 1 of Art. 180 of the Criminal Code of the Russian Federation means the use of a trademark or a confusingly similar designation without the permission of the copyright holder of the specified means of individualization: 1) on goods, labels, packaging of these goods that are produced, offered for sale, sold, displayed at exhibitions and fairs or otherwise are introduced into civil circulation on the territory of the Russian Federation, or are stored and (or) transported for this purpose, or are imported into the territory of the Russian Federation; 2) when performing work or providing services; 3) on documentation related to the introduction of goods into civil circulation; in offers to sell goods; 4) on the Internet, in particular in a domain name and other addressing methods (clause 18);

c) the use of a registered appellation of origin of goods by a person who does not have a certificate should be recognized as illegal, even if the original place of origin of the goods is indicated or the name is used in translation or in combination with such expressions as “genus”, “type”, “imitation” etc., as well as the use of a similar designation for any goods that can mislead consumers regarding the place of origin and special properties of the goods (paragraph 2, paragraph 21);

d) illegal in relation to Part 2 of Art. 180 of the Criminal Code of the Russian Federation is the use of warning markings in relation to a trademark or place of origin of goods that are not registered in the Russian Federation (paragraph 3, paragraph 23);

e) criminal liability under Art. 180 of the Criminal Code of the Russian Federation for the illegal use of someone else’s trademark or other means of individualization occurs only in cases where this act was committed repeatedly or caused major damage.

Repeatability within the meaning of Part 1 of Art. 180 of the Criminal Code of the Russian Federation requires a person to commit two or more acts consisting of the illegal use of a trademark, service mark, appellation of origin of goods or similar designations for homogeneous goods. (In this case, there may be either repeated use of the same means of individualization of a product (service), or the simultaneous use of two or more foreign trademarks or other means of individualization on one unit of goods.)

In relation to Part 2 of Art. 180 of the Criminal Code of the Russian Federation recognizes the repeated commission of two or more times of illegal use of warning markings in relation to a trademark or appellation of origin of goods not registered in the Russian Federation (clause 15);

f) in accordance with the note to Art. 169 of the Criminal Code of the Russian Federation, damage caused by the acts specified in Art. 180 of the Criminal Code of the Russian Federation, is considered large if it exceeds two hundred and fifty thousand rubles (paragraph 2, paragraph 24);

g) when qualifying the actions of the perpetrators, the moral damage caused to the victim, including those associated with undermining his business reputation, should not be taken into account (paragraph 1, paragraph 28).

The corpus delicti is formal and material.

A continued act does not constitute repetition when the illegal use of means of individualization is covered by a single intent (for example, affixing someone else’s trademark on items included in one batch of production).

On the qualitative side, major damage most often results from lost profits to the owner of a trademark (service mark, appellation of origin of goods) due to the gratuitous use of his exclusive rights, as well as loss of the market for goods, work performed or services provided.

Damage is not caused to the victim when he demanded that the offender pay compensation instead of compensation for losses (clause 4 of Article 1515 and clause 2 of Article 1537 of the Civil Code of the Russian Federation).

A person who illegally used someone else’s trademark, service mark or name of place of origin of goods or similar designations for homogeneous goods, as well as illegally used warning markings, is subject to liability for a set of crimes provided for in Part 1 of Art. 180 and part 2 of Art. 180 of the Criminal Code of the Russian Federation.

An act associated with causing damage to a consumer due to misleading him regarding the consumer properties and quality of goods (services) must be qualified in conjunction with fraud (Article 159 of the Criminal Code of the Russian Federation).

On the totality of Art. 180 from Art. 171 of the Criminal Code of the Russian Federation, see commentary to Art. 171 of the Criminal Code of the Russian Federation.

Subjective side

crimes are characterized by guilt in the form of direct or indirect intent. The person realizes that he is illegally repeatedly using a trademark, service mark, appellation of origin of goods, similar designations for homogeneous goods, warning markings in relation to a trademark or appellation of origin of goods not registered in Russia, and wishes to do so. Given the materiality of this crime, the person foresees the possibility or inevitability of causing major damage to the copyright holder and desires this, or consciously allows these consequences or is indifferent to them.

Motive and purpose are irrelevant to qualification. However, as a rule, this act is committed with the aim of ruining the business reputation of the copyright holder, who may also be a competitor, causing him losses or obtaining property benefits for himself.

Subject

general crime - a sane individual who has reached the age of sixteen years. They can be individuals, including those registered as individual entrepreneurs, or heads of organizations.

The qualifying feature of the act is the commission of a crime by a group of persons by prior conspiracy (see Part 2 of Article 35 of the Criminal Code of the Russian Federation and the commentary thereto) or by an organized group (see Part 3 of Article 35 of the Criminal Code of the Russian Federation and the commentary thereto).

For the illegal use of someone else's trademark, service mark, appellation of origin of goods or similar designations for homogeneous goods, administrative liability is also provided for (Article 14.10 of the Code of Administrative Offenses of the Russian Federation). Unlike criminal, administrative liability occurs in the absence of evidence of repetition and major damage caused to the copyright holder.

Challenging

The grounds and terms of the challenge are discussed in detail in Article 1512 of the Civil Code of the Russian Federation. The main reasons for contestation are:

In the case when TK is a global brand, one of the monopolies in its field (for example: Coca-Cola, Xerox, Palaroid, etc.). There are a lot of similar examples, especially with the Coca-Cola brand; every person can remember at least one.
Trademarks that consist only of descriptive elements (for example: sparkling wine, caramel bar, super paste).
Trademarks that contain the coats of arms or flags of a particular state, symbols of intergovernmental organizations.
Technical specifications that can mislead the consumer (for example, if the sign shows a camel with sheep’s wool).
TK is immoral, contrary to public morality and signs of human humanity.

A frequent example of a challenge is a situation where a trademark that is not registered, but used by the copyright holder, is officially registered by another person. The result may be a challenge by the official copyright holder of the rights of the original author of the idea.

The above article partially provides for restrictions on the time limits for challenging up to 5 years from the date of publication of information about the state registration of trademark in the official gazette. Basically, the challenge is carried out during the entire period of validity of the exclusive right to the trademark.

How to file an objection to registration?

An application for challenge can be filed by the interested copyright holder on the basis of Art. 1513 of the Civil Code of the Russian Federation. The procedure for challenging a trademark is as follows:

The application is submitted to the Chamber of Patent Disputes (hereinafter referred to as the Chamber of Patent Disputes).
From the Chamber, the application goes to FIPS, after which you need to pay a fee in the amount of 13.5 thousand rubles.
The application of the teaching staff is being reviewed. There may be several meetings. Review may take from 3 to 6 months.
If the plaintiff does not agree with the decision of the PPP, then he can file a claim with the Intellectual Property Rights Court.
Each situation is considered individually with an eye to paperwork.

Results of the challenge

After filing an application for appeal and making a decision by the federal body, if the answer is positive, either a new certificate is received or the current one is canceled (depending on the reasons for the challenge).

Illegal use of a trademark (Article 180 of the Criminal Code of the Russian Federation)

author of the article Lawyer Oleg Viktorovich Pantyushov

Illegal use of someone else’s trademark, service mark, name of place of origin of goods or similar designations for homogeneous goods, if this act was committed repeatedly or caused major damage, forms a crime under Part 1 of Article 180 of the Criminal Code of the Russian Federation.

In accordance with paragraph 15 of the Resolution of the Plenum of the Armed Forces of the Russian Federation dated April 26, 2007 N 14: “When resolving the issue of the presence in a person’s actions of elements of crimes provided for in Articles 146, 147 and 180 of the Criminal Code of the Russian Federation, courts must take into account the provisions of civil legislation that the use of the results of intellectual activity and equivalent means of individualization of a legal entity that are the object of exclusive rights (intellectual property) can be carried out by third parties only with the consent of the copyright holder.

Repeated activity within the meaning of Part 1 of Article 180 of the Criminal Code of the Russian Federation presupposes the commission by a person of two or more acts consisting of the illegal use of a trademark, service mark, appellation of origin of goods or similar designations for homogeneous goods. (In this case, there may be both repeated use of the same means of individualization of a product (service), and the simultaneous use of two or more foreign trademarks or other means of individualization on one unit of goods).

In relation to Part 2 of Article 180 of the Criminal Code of the Russian Federation, the illegal use of warning markings in relation to a trademark or appellation of origin of goods not registered in the Russian Federation is recognized as repeated two or more times.”

The subject of crimes, the liability for which is established by parts 1 and 3 of Article 180 of the Criminal Code of the Russian Federation, is someone else’s trademark, service mark and name of the place of origin of the goods or similar designations used for similar goods.

A trademark and service mark are designations used to individualize goods, work performed or services provided by legal entities or individuals. Someone else's trademark is a trademark (service mark) that is registered in the name of another person and is not assigned under an agreement in relation to all or part of the goods, or the right to use which is not granted by the owner of the trademark to another person under a license agreement.

In accordance with current legislation, registration of a trademark does not give the copyright holder the right to prohibit the use of this trademark by other persons in relation to goods that were introduced into civil circulation on the territory of the Russian Federation directly by the copyright holder or with his consent. Consequently, such goods cannot be recognized as counterfeit in cases where a registered trademark is used in relation to such goods by a person who is not its owner.

Part 2 of Article 180 of the Criminal Code of the Russian Federation provides for liability for the illegal use of warning markings in relation to a trademark or appellation of origin of goods not registered in the Russian Federation, if this act was committed repeatedly or caused major damage.

Acts provided for in parts one or two of Article 180 of the Criminal Code of the Russian Federation, committed by a group of persons by prior conspiracy or by an organized group form a qualified corpus delicti of this crime.

The subject of a crime for the illegal use of a trademark or place of origin of a product is a sane individual who has reached the age of 16. The subjective side (or form of guilt) is the attitude of a person to the act he has committed in the form of direct or indirect intent.

The corpus delicti provided for in part three of Art. 180 of the Criminal Code of the Russian Federation, can only be committed if there is direct intent. The object of the crime is intellectual property (exclusive rights) to means of individualization of goods. From the objective side, this crime is expressed in actions for the illegal use of a trademark or appellation of origin of a product.

Criminal lawyer. Defense in criminal cases.

How to prevent a violation?

To ensure that a trademark assigned to the copyright holder is not used, special measures are required. Here are a few of them:

You should never forget about preventive measures. Using the services of lawyers, you can check whether the designation of the company that the copyright holder is planning to open is free.
Checking points of sale. It is necessary to allow experts to check your field of activity.
Verification of supplier rights. If the copyright holder decides to send his goods abroad, then he simply needs to be sure that the supplier has all the legal rights to do so.
A technical site cannot be forced to remain empty for more than 3 years. If this happens, then competing companies will be able to go to court to register a similar trademark.

What to do if you face a fine?

Each such case is absolutely individual. If the person completely agrees with the claim, then compensation is simply paid to the copyright holder.

Otherwise, the case goes to the arbitration court. Experts note that most of the compensation does not exceed 100 rubles, i.e. everything takes place in a simplified form, without court hearings.

However, court participants have every right to request a transition from summary trial to regular trial , which experts say is the best solution. Thanks to this, the defendant has the right to show products with his own technical specifications. This decision is due to the fact that most defendants lose in court, fully relying on a simplified process. The chance of winning the case for the involved party increases many times.

Nowadays, it is necessary to be legally literate. This will help everyone who is going to start their own business to avoid mistakes in creating their own sign. This will also protect the copyright holder from unnecessary problems with those who are trying to make an easy profit by copying technical specifications.