NOTIZIE

Russia: Highest Arbitration Court opens the door for parallel importers

The Highest Arbitration Court of Russia has issued a decision concerning the parallel import into Russia of authentic goods which were legally purchased abroad by a person not otherwise authorised by the exclusive right holder. In its Ruling No. 10458/08 of 3 February 2009, the Court decided that a person who imports into Russia goods marked with a trade mark registered in Russia will not be liable for trade mark infringement, provided that the goods were originally produced by the right holder.

On 28 October 2007, Genesis LLC imported a Porsche Cayenne car into Russia. Porsche Russland LLC, an authorised distributor of Porsche AG based in Russia, filed a complaint to the Federal Customs Service claiming that Genesis LLC had used the trade marks “Porsche” and “Cayenne”, registered by Porsche AG in Russia, without permission.

The Federal Customs Service brought a claim under the Russian Code on Administrative Offences against Genesis LLC for trade mark infringement. The Moscow Arbitration Court ruled that goods bearing a trade mark registered in Russia may be imported into Russia only with the consent of the trade mark owner. It thus imposed an administrative fine on Genesis LLC and ordered the car to be confiscated as a pirated product.

However, Genesis LLC subsequently applied to the Highest Arbitration Court, which overruled the lower court judgment. The Court emphasised that, at the moment that the car was produced and placed on the market abroad by the right holder, Porsche AG, there was no trade mark infringement. Thus there was no illegal use of Porsche AG’s marks after the car had crossed the Russian border. The essence of the ruling is that the exclusive right to a trade mark shall not be deemed infringed where the trade mark is used by another person with respect to goods that have previously been placed on the market by the trade mark owner. As a result, the lower court’s order authorising the Customs Service to confiscate the car was reversed.

 The ruling of the Highest Arbitration Court may be viewed as a turning point in the practice of the Russian courts regarding parallel imports. Although the Highest Arbitration Court’s rulings are not formally binding for the lower courts, in practice they are taken into consideration by all judges. Historically, Russian courts tended not to support unofficial importers and dealers even where the imported goods were authentic. However, in this case, the Court attached particular importance to the fact that the trade mark owner had authorised both the production of goods and their introduction onto the market outside Russia and was less concerned with whether it had authorised their import into Russia. Having said that, the ruling will not preclude the trade mark owner from suing the importer under the Civil Code. It is possible that this issue will be reviewed further by the courts.

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