Law360 Quotes Josh Gerben About the Status of IP in Russia

Since Russia has threatened Western intellectual property rights within the country, many U.S. attorneys are struggling to provide clients with insight on how to best plan for that region of the world. While many believe that Russia’s threats might just be posturing, it’s best to be cautious as no one knows how far Russia will go to back up its threats.

Law360 spoke with Josh Gerben regarding his thoughts regarding trademarks in Russia and any advice he might have for those seeking protection in the country.

Over the last few weeks, there has been a clear “degrading of IP rights in Russia,” as its invasion turns into an economic war, said Josh Gerben.

Earlier this year, the Russian government released a decree that allowed the uncompensated use of IP from a list of countries that are “unfriendly” towards the Russian government. Since then several Russian trademark applications have been filed, all copying major Western brands. Shortly thereafter, a lower level judge refused to enforce “Peppa Pig” trademarks, referencing the political and economic sanctions currently levied against Russia as the reason for his refusal. This is far from the norm, however, as three other courts required other Russians who infringed upon the same “Peppa Pig” marks to compensate the U.K. trademark owner.

A few weeks later, after many Western businesses pulled out of the country, the Russian prime minister decided to allow the import of branded products into the country, regardless of whether the owner wants them to be sold there or not.

It’s suspected that the threats against intellectual property might be serving as propaganda for the Russian government and any individual infractions can be linked personal feelings versus government directives. Similarly, at this point there’s no reason to believe that Russia will approve the filed infringing trademark application, but the trademark registration process takes time.

For now Gerben said, the Russian trademark applications appear to be “social media fodder” based on “opportunistic individuals.”

“You’re still seeing that IP rights have a pulse in Russia,” he added. “I’m not saying they’re great, but they have a pulse.”

Gerben also references a time, when the Soviet Union would hold public trials of defendants already deemed guilty as propaganda. He said the current IP landscape could head that way, with large companies like McDonald’s facing the most public threats. Gerben also suggests Russia could start operating McDonald’s with local owners as a way to grab headlines.

“This is a government that relies on propaganda,” he said.

That being said, should companies continue to file trademark applications in Russia? Trademark prosecution is relatively inexpensive, Gerben said, so there’s a sense of “why not?” If anything, he said the increase in gray-market goods cleared by the prime minister strengthens the need for trademark protection in the long term. Delays may also lead to Russian entities getting trademark registrations for company names or logos in the hopes of getting paid to hand them over, he said.

“You could see Russia decide it doesn’t need to interact with the Western world and seek to strengthen ties with Asia and other parts of the world where it can derive products and services and trade from,” Gerben said. “To think they need a relationship with the United States to exist would be incorrect.”

But he added that if Russia chose to close off from the West and nationalize global brands like McDonald’s, it runs the risk of being “the next North Korea.”

“There’s a large incentive for Russia to eventually come back around and respect the registrations that already exist and have a legitimate process going forward,” Gerben said.

Source: Kass, Dani. “Uncertainty Clouds Attys’ Strategies For Pursuing IP in Russia.” 13 April 2022.

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