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Author Details

Pramita, 2nd-year LL.B, Symbiosis law school,Pune

Title
Intellectual property warfare: An analysis of the Russia-Ukraine conflict on Trademark law
Meta Description

Ever since the outbreak of Russia-Ukraine crisis, global brands have started halting their
business operations in Russia.IP threats, especially with regards to trademarks by Russia, has
attracted chastisement from the global community, while condemnation is one issue; this blog
aims to fill in the research gap by analysing the impact of war on IP, especially trademark
infringement.

Even though trademark law is a local law, it has to maintain some global minimum standards
to comply with TRIPS. We’ll address how this event has opened a pandora of new challenges
in protection and enforcement of IP-related rights with a special focus on Trademark law.

Keywords

Trademark infringement, Economic sanction, Rospatent, Ukraine crisis

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Intellectual property warfare: An analysis of the Russia-

Ukraine conflict on Trademark law

Introduction:-
In February 2022 the infamous “Ukraine crisis” led to loss of lives of millions of people. We
saw the global economy dwindling at the onset of economic sanctions. It concerns all of us as
humans and the global community. However, why it also matters to Intellectual property
enthusiasts is how we are witnessing intellectual property being used as a “weapon”.

As a dissent against the actions of Russia, several famous brands had withdrawn from the
country.

Russia threatened to suspend the intellectual property rights of companies that have ceased
operations in Russia in response to economic sanctions and boycotts imposed by the United
States and other Western countries.

Concomitantly, there has been an increase in trademark filings for various brands ranging
from Starbucks to channel. More so, as a response to economic sanctions, Russian
government had issued a decree wherein the unauthorized use of IP-related matters of the
corporations of the “unfriendly countries” would not constitute “infringement” 1. This is raises
a few pertinent questions.

Is there then any mechanism for rights of the trademark holders to protect their brand and
reputation in these times? What is the legality of the decree issued by Russian government
blatantly infringing on the rights of trademark holders? And most importantly how should
global community address this issue through WTO mechanism and treaties. It is pertinent that
we look at this issue as an IP enthusiast rather from the perspective of global diplomacy to
foster growth and reverence of trademark law.

Series of Events in Russia constituting Trademark Infringement:-

The first blow after Russia’s issuance of the decree was the Peppa Pigs case. Herein
Entertainment one UK ltd filled a trademark and copyright infringement suit against Russian
entrepreneur. The Kirov court rejected the infringement suit as UK was one of the
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Decree of 28 February 2022 No. 79 “On the Application of Special Economic Measures in Connection with
Unfriendly Actions of the United States of America, Foreign States and International Organizations”
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“unfriendly countries” as they had imposed sanctions, and that the plaintiff’s actions
amounted to “dishonest conduct”2.

Soon after a “hostile” speech by US sec-gen on Ukraine crisis, trademark registration for
mark Uncle Vanya similar to MC Donald’s was filled with M being moved 90 degrees,
having the same color combination. Several trademarks similar to the famous brands were
filled in Rospatent (Russia’s IP office) afterward

Vera Sevastianova has as part of the research in “Wartime challenges to Trademark law”
compiled trademark applications similar or identical to those of globally recognized brands
like Channel, Nivea, Bobbi brown etc directly from the bulletin of Rospatent. The Authors
argue that these applications have been “opportunistically” filed considering the recent decree
of the government3.

As evident, it seems like IP is being used a tactic to send messages across. But it’s pertinent
to know whether the present international setup is stringent enough to protect brands and
keep the politics aside?

International regime to protect trademark infringement:-

Trade-related aspects of intellectual property had set up minimum standards for the protection
of Intellectual property. It includes passing laws for protection of IPR, protection of well
know trademarks etc. Even though trademark law is a local law, it has to maintain some
global minimum standards to comply with TRIPS(see art 1-8 of Trade-related aspects of
intellectual property rights).

Further, the Madrid system had established a system of “International registration” where
international applications are governed exclusively by agreement. The trademark registry of
the national country, before registering a trademark, has to check whether it resembles the
internationally filled trademark.

Both these agreements provide enforcement and dispute resolution systems via WTO, ICJ
and arbitration mechanisms.

2
Judgment of the Commercial Court of the Kirov Region dated March 3, 2022, case no. A28-11930/2021, Register of
Commercial Cases of the Russian Federation.
3
Calboli, I. and Sevastianova, V., 2022. Wartimes Challenges to Trademark Law: What Will Happen to Foreign
Trademarks in Russia? Presenting the List of “Opportunistic” Trademark Applications Recorded by the Russian
IP Office. Presenting the List of “Opportunistic” Trademark Applications Recorded by the Russian IP Office
(July 14, 2022).
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How did laws work in Russia?

Even though TRIPS did solidify IPR protection by establishing minimum standards, it left up
to the government as to how to implement them.

Russia is a “first to file” rather than a “first to use country.”It simply means those who
register first, get the protection first. That would mean that brands “temporarily” closing may
risk losing their trademark rights. Russian Law says that if a country suspends TM usage for
3 years, TM may be abandoned4. While the new registrations may get registered by then.

There’s also a concern that the Trademark of these brands may be infringed by way of
“Parallel imports. “Since Russia is also a member of the EAEU(European union economic
union), the Constitutional court of Russia has held that parallel imports may not constitute
trademark infringement5.

It must be remembered that immediate relief to trademark right holders of those hailing from
“unfriendly states” may not be available as it’s the member country that raises the disputes at
WTO6.

While this may be a genuine concern, it is observed that Rospatent, the trademark registry of
Russia, seemed reluctant to register any trademark resembling any “well-known” trademark.

Russia is a party to TRIPS and in compliance with the same, Russia’s civil code has
provisions absolutely prohibiting the marks that are likely to deceive consumers owning to
similarity with “renowned marks”7.

Russia is also party to the Madrid system; Rospatent has rejected many of the registrations
resembling that of famous/internationally registered trademarks.

To much of western counties surprise, appellate court had reversed the verdict of Peppa Pigs
case, and it is unlikely that copied versions of “renowned trademarks” are likely to be
registered (as witnessed in FANTA case).

4
Calboli, I. and Sevastianova, V., 2022. Fashion in the Times of War: The Recent Exodus of Luxury Brands from Russia
and What It Means for Trademark Law. 
5
Resolution of the Constitutional Court of the Russian Federation no. 8-П, February 13, 2018, CONSULTANTPLUS,
http://www.consultant.ru/document/cons_doc_LAW_290909.
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See, e.g., World Trade Organization, The Process – Stages in a Typical WTO Dispute Settlement Case,
https://www.wto.org/english/tratop_e/dispu_e/disp_settlement_cbt_e/c6s1p1_e.htm.
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Civil Code of the Russian Federation, art. 1483(3)(1), CONSULTANTPLUS,
http://www.consultant.ru/document/cons_doc_LAW_64629.
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What is evident, thus, is that the hysteria of trademark infringement owning to the mass
exodus of global brands is threat issued to the IP community as a whole and not particularly
brands.

Brands must keep an eye on new deceptively similar trademark applications nonetheless so as
to protect their interest.

Final comments and conclusion:-

It’s the first time in history that Intellectual property, especially trademarks has been used in
“economic warfare”. From a broad perspective, It must be noted that Unlike common
perception of Russia is not an IP-friendly country since the beginning, the reality remains that
prior to the war period Russia had been going in the right direction having its own innovative
ways of protecting IP-related rights, especially Patents and Trademark law. It’s only after the
war and consequent sanctions period that IP has been used as a retaliatory measure, we saw
how many of the deceptively similar marks of famous brands were rejected to be registered in
Rospatent office and how Peppa pigs case was used as a vindicative weapon against Boris
Johnson. It is the Anxiety and Hysteria that Kremlin is creating by way of countermeasures
which is and will hamper Business. It needs to be talked about so as to analyze the upcoming
challenges in Trademark law. War tactics aren’t new, but IP being a weapon in the same,
definitely is. No doubt, it only reflects the increasing relevance of IP. It is important to
address the law relating to Trademark rather than merely talking about
diplomacy. .Trademark infringements is not a weapon to fight especially in times of
Pandemic when cooperative efforts regarding economic restructuring is required.

References
Statutes

Decree of 28 February 2022 No. 79 “On the Application of Special Economic Measures in Connection with
Unfriendly Actions of the United States of America, Foreign States and International Organizations”

Civil Code of the Russian Federation, art. 1483(3)(1), CONSULTANTPLUS,

http://www.consultant.ru/document/cons_doc_LAW_64629.

Case laws
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Judgment of the Commercial Court of the Kirov Region dated March 3, 2022, case no. A28-11930/2021, Register of
Commercial Cases of the Russian Federation.

Resolution of the Government no. 506, March 29, 2022, CONSULTANTPLUS,

http://www.consultant.ru/document/cons_doc_LAW_413173

Resolution of the Constitutional Court of the Russian Federation no. 8-П, February 13, 2018, C ONSULTANTPLUS,
http://www.consultant.ru/document/cons_doc_LAW_290909.

Research papers

Calboli, I. and Sevastianova, V., 2022. Wartimes Challenges to Trademark Law: What Will Happen to Foreign
Trademarks in Russia? Presenting the List of “Opportunistic” Trademark Applications Recorded by the Russian
IP Office. Presenting the List of “Opportunistic” Trademark Applications Recorded by the Russian IP Office
(July 14, 2022).

Calboli, I. and Sevastianova, V., 2022. Fashion in the Times of War: The Recent Exodus of Luxury Brands from
Russia and What It Means for Trademark Law. 

Leaffer, M.A., 1998. The new world of international trademark law. Marq. Intell. Prop. L. Rev., 2, p.1

Newspapers/articles online

Maksim Varaksin, It Will Be Allowed Not to Execute Agreements Due to Sanctions,

PRAVO.RU (March 24, 2022),
https://pravo.ru/story/239959.
Yekaterina Vinogradova, Natalya Galimova, Pyotr Kanayev et al, How the Authorities
Decided to Manage the Property of
Companies Leaving Russia, RBC (March 9, 2022),
https://www.rbc.ru/economics/09/03/2022/6228acf99a79477828ae9aba.

states’ compliance with their international law obligations is secured through the WTO
dispute settle‐ ment mechanism. So far there have been 37 registered cases before the WTO
dispute settlement system arising out of the TRIPS agreement.38 Cases such as Canada —
Patent Term39 and United States — Section 110(5) of US Copyright Act40 are prominent
examples how the TRIPS flexibilities function.