Intellectual Property Protection

Have you discovered counterfeit goods on marketplaces that infringe your intellectual property rights? We can help you bring the offenders to justice in three ways and register your company's trademark in TROIS

The growth and development of e-commerce in Russia has inevitably led to an increase in counterfeit goods. This problem became particularly acute after 2022, when some world brands left the Russian Federation and the Russian government partially allowed the import of goods through parallel import. In this context, many right holders (sellers, suppliers) have noticed that many counterfeit goods appeared on large Russian marketplaces:  falsely branded goods presented as original products. Often such goods are imported into Russia from China and India via Kazakhstan and the Persian Gulf countries.

Magenta Legal lawyers help right holders (sellers, suppliers) on marketplaces such as Ozon, Yandex, Wildberries and advertisement sites such as Avito to combat counterfeit goods and, importantly, we take a comprehensive approach. When advising the right holder, we determine the objectives and strategy for protecting the exclusive rights: from administrative, civil and criminal prosecution of infringers, to direct dispute resolution with marketplaces to remove counterfeit goods from sale, to registration of the trademark in the Customs Register of Intellectual Property of the Federal Customs Service (TROIS).

MAGENTA Legal has joined the international association “Anti-Counterfeiting”. This association brings together experts in intellectual property protection and the prevention of the illegal movement of goods. We are delighted to have the opportunity to become part of this expert community, which is committed to combatting counterfeiting both in Russia and abroad.

MAGENTA Legal offers the following legal services to prevent the sale of counterfeit and protect the rights of right holders:

1. Detecting counterfeit goods on the Internet, monitoring sellers of counterfeit goods on marketplaces and communicating with marketplaces to remove counterfeit from sale

MAGENTA Legal has developed an algorithm to detect offenders offering counterfeit goods on marketplaces such as Ozon, Yandex, Wildberries, Avito. Thanks to the unique system for recognising cards with counterfeit goods, our lawyers immediately suppress all attempts to offer counterfeit goods for sale over a long period of time. In close cooperation with the legal departments of the marketplaces, the MAGENTA Legal team successfully stops the sale of counterfeit goods and achieves satisfaction of its clients' claims.

In 2024 alone, thanks to the efforts of MAGENTA Legal's lawyers, **more than 5.000 copies **of counterfeit goods have already been removed from sale on the Ozon, Yandex and Wildberries marketplaces.

2. Compensation of up to 5 million Rubles (for one case) in favour of the right holder

Civil liability for infringement of the exclusive right of the right holder to a trademark is provided for by Article 1515 of the Civil Code of the Russian Federation.

At the expense of an unfair seller in a marketplace, the right holder has the right to demand the withdrawal and destruction of counterfeit goods, labels and packaging of goods bearing an illegally used trademark or a confusingly similar designation.

And, of course, the right holder has the right to demand compensation from the infringer instead of damages, at his discretion: 

1. in the amount determined by the court depending on the nature of the infringement, from 10 thousand to 5 million Rubles; 

2. double price of the goods to which the trademark is illegally affixed or double price of the licence (the right to use the trademark determined on the basis of the price usually charged for the lawful use of the trademark in similar circumstances).

In many cases, after receiving a formal pre-litigation demand from the lawyers, the infringers realise the risk and voluntarily agree to pay damages on the basis of a settlement agreement. In other cases, the lawyers go to court and win majority of cases. Subsequently, the court also recovers from the defendant the costs of the test purchase, the notarised examination of the websites, the postage and, finally, the costs of the lawyers' own legal advice.

3. Administrative liability of sellers who offer counterfeit goods on marketplaces

If there is clear evidence, the offender may be held administratively liable in accordance with clause 1 of Article 7.12 of the Code of Administrative Violations of the Russian Federation and Article 14.10 of the Code of Administrative Violations of the Russian Federation. Both the company itself (or an individual entrepreneur) and its general director or responsible person may be fined.

The payment of compensation under Article 1515 of the Civil Code of the Russian Federation does not affect the imposition of an administrative fine. Thus, if the infringer does not voluntarily pay compensation in accordance with the settlement agreement and brings the case to the court, in most cases the right holder can initiate administrative liability against the ‘pirate’, which will increase his losses.

4. Prosecution of persons involved in the production and marketing (including offering for sale on the Internet) of counterfeit goods on marketplaces

MAGENTA Legal works closely with law enforcement agencies and assists clients in bringing unscrupulous persons to criminal liability under Article 180 of the Criminal Code of the Russian Federation.

Even if the seller avoids criminal liability, he may be called as a witness in criminal proceedings against wholesalers and manufacturers (production customers). The mere request by law enforcement authorities to testify in criminal proceedings also has serious consequences for the seller.

As in the case of administrative liability, the seller increases the risk of being involved in preliminary proceedings if he does not agree to voluntarily comply with the demands of the right holder in the preliminary proceedings.

5. Registration of a trademark in the Customs Register of Intellectual Property of the Federal Customs Service (TROIS)

As a preventive measure – in order to reduce the risk of counterfeit goods appearing on the market – MAGENTA Legal team offers services for the registration of trademarks in the Customs Register of Intellectual Property (TROIS): from the application to contacting and document management with the Federal Customs Service.

TROIS was created to prevent the appearance of counterfeit goods imported into Russia from other countries as part of foreign trade activities. If your trademark is registered, the customs authorities will not allow counterfeit goods to be imported into Russia, and you will be notified and can take steps to protect your rights.

For more information on TROIS, please have a look at our article on the link.

If you are interested in protecting your trademark (preventing the sale of counterfeit goods that copy your trademark on marketplaces and bringing the sellers of counterfeit goods to justice) write us at info@magenta.legal or leave a request on our website using a special form.