NYLJ Publishes Article on Intellectual Property in Russia by Mary Grieco

New York Law Journal (subscription required) published an article authored by Intellectual Property/Brand Management and Protection partner Mary Grieco, entitled “Intellectual Property in Russia: Protect Your Rights.” The article explores the impact that Russia’s invasion of Ukraine has had on the intellectual property of companies from countries Russia has deemed “unfriendly” (including the U.S. and European countries) which had been operating in Russia and the challenges which global brands now face in enforcing and even retaining their intellectual property rights in Russia.  The article explains that brands that have ceased operations in Russia indefinitely may eventually be in danger of losing their trademark rights after three years of non-use.  As detailed in the article, recent decrees and court decisions in Russia have cast doubt on whether brands will be able to enforce and maintain their existing intellectual property rights.  For example, a decree in March 2022 lowered the compulsory license fee - the fee paid to a patent holder if the Russian government uses a patented invention without the owner’s consent - to 0% in the case of patent owners from “unfriendly countries”.  Another resolution in March 2022 effectively allowed for parallel imports, which could harm the rights of trademark owners.  Enforcement of trademark rights in the courts has also become more uncertain.  When a Russian trial court refused to enforce rights in a British-owned trademark, the decision referenced the “unfriendly actions of the United States of America and affiliated foreign countries”.  This decision was, however, reversed on appeal.  There have also been concerns that making payments required to maintain and prosecute patents and trademarks in Russia might violate the various sanctions laws enacted against Russia and Russian interests. So far, the U.S. government has specifically clarified that payments to protect intellectual property rights in Russia would not be a violation of sanctions regulations.  Mary concludes that despite the uncertainty, at this juncture the best strategy for intellectual property owners would be to continue to maintain and seek protection for their Russian patents and trademarks, stating, “By seeking to obtain and maintaining its patents and trademark registrations, a party may at least have a chance to protect its intellectual property rights.”