How we helped a foreign company to stop the flow of counterfeit goods

A major foreign manufacturer of water pumps contacted us. Despite the impossibility of supplying pumps to Russia, many online sites and stores advertised the sale of pumps bearing the manufacturer's trademark. 

At the same time, consumers began to send complaints about product quality to the company's Russian representative office. When inspecting a defective product, the manufacturer discovered a counterfeit, which is a product that has the manufacturer's trademark applied to it and has entered the Russian market. The consumer was misled into thinking they were purchasing genuine pumps. The copyright holder has the authority to control the use of its intellectual property and means of individualization in order to protect the consumer according to the norms of the Russian Federation's Civil Code. He has the discretion to allow or prohibit others from using the result of intellectual activity or means of individualization. The absence of a prohibition does not constitute consent (permission). 

Other individuals may not use the corresponding result of intellectual activity or means of individualization without the permission of the copyright holder, except in cases specified by the Russian Federation's Civil Code. The use of a result of intellectual activity or a means of individualization without the consent of the copyright holder is illegal and incurs liability. This provision enables the copyright holder to actively prevent the spread of counterfeit products. 

We identified more than 50 sellers and threatened them with compensation if they continued to sell counterfeit goods after receiving authorization from the manufacturer. At the same time, we took into consideration that, according to the position of the Russian Federation's Constitutional Court, the courts have the right to refuse, in whole or in part, to apply the consequences of importation into the territory of the Russian Federation without the consent of the copyright holder of a trademark of a specific batch of goods on which the trademark is placed by the copyright holder himself or with his consent and which is legally released into circulation outside the Russian Federation in cases where, due to the dishonest behavior of the trademark owner, the application at his request of such consequences may create a threat to the life and health of citizens and other publicly significant interests. At the same time, the trademark right holder's adherence to the regime of sanctions against the Russian Federation and its economic entities, imposed by any state outside the proper international legal procedure and in violation of multilateral international treaties to which the Russian Federation is a party, as expressed in the right holder's position in relation to the Russian market, may be considered unconscionable conduct. 

However, in this case, the manufacturer acted in good faith; the requirements were only presented to companies that could not confirm the product's origin and the legality of its import across the customs border. 

Also, according to the provisions of paragraphs 1 and 2 of Article 1515 of the Russian Civil Code, goods, labels, and packaging on which a trademark or a designation confusingly similar to it is illegally placed are counterfeit. The copyright holder has the right to order their removal from circulation and destruction at the violator's expense. 

According to the law, the company has the right to demand compensation for losses from the counterfeit seller, as well as payment of compensation ranging from 10,000 to 5 million rubles for each instance of violation. 

Taking into account the quantity of goods offered for sale, claims to cease trading in counterfeits were accompanied by a reference to the right to seek such compensation for each unit of goods. 

We were able to block several channels for the sale of counterfeits as a result of hard work, including active interaction with sellers to track counterfeit import chains. After receiving the demand, some sellers independently verified the legality of the goods supply channels and discovered the risks of counterfeiting. Given that in the event of a pump failure, the consumer will approach the seller with a demand to eliminate the defects, conscientious businesses deemed it necessary to discontinue supplying products of questionable origin. 

Thus, the company was able to protect its rights and interests while also protecting consumers from low-quality products.