The latest decision of the Russian Intellectual property court upheld the inferior courts’ opinion on the non-infringement of trademarks in the case of importing goods for duty-free shops in Russia. This decision might be crucial for those companies that ceased the import of goods in Russia.Soyuzplodoimport filed a lawsuit against AeroTradeM to ban the sale of alcoholic products manufactured by SPI Group in Latvia using trademarks “STOLICHAYA VODKA”.
Soyuzplodimport is the owner of the family of trademarks “Stolichnaya” for alcoholic beverages, namely vodka. An identical trademark belongs to Latvijas Balzams in Latvia and was legally applied to the bottles in the country of production. According to Soyuzplodimport, the import of such goods into Russia is a violation of its rights.
However, it’s a little more complicated, the goods weren’t imported into Russia in a legal sense. The goods were placed under the “duty-free trade” customs procedure (IM96), which means the goods were dedicated to being sold in duty-free shops. Therefore, according to the courts, there is no violation of trademarks in this case, since AeroTradeM didn’t use the disputed trademarks in commerce on the territory of the Russian Federation. The crossing of the Russian border itself doesn’t necessarily mean that the goods will be sold in Russia.
Vodka without a federal license stamp, which must be applied before the import of alcoholic beverages into Russia, placed under the duty-free customs procedure, could not be released for domestic consumption, it could not be sold on the territory of Russia.
Many foreign companies that left Russia earlier this year due to the Russian invasion of Ukraine assess the risk of parallel trade, now you can confidently say that the duty-free customs procedure doesn’t involve the actual use in commerce on the territory of Russia, therefore, the consent of the right holder isn’t required in such cases and “parallel trade” is highly possible.
Written by Anastasia Skovpen, IP Lawyer at Nestle
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