Why Russian Reforms Need Rethinking
by Tom Thomson
Managing Intellectual Property, October 2006
The Russian parliament is now considering
Part IV of the Civil Code
(Part IV). If this is enacted, it
would change the country’s IP legal
framework and paralyze the development
of new laws and regulations.
Worse still, it would endanger the IP
protections enjoyed by rights owners in
Russia.
Passed unanimously by the State
Duma, the lower house of parliament,
in the first reading, Part IV is now in
the amendment phase of the legislative
process and being prepared for the second
and third reading. It is possible
that the law could be enacted before
the end of the year.
Despite criticism from international
and Russian IP specialists and WTO
member states, particularly the US, Part
IV was submitted to the Parliament by
the Russian Presidential
Administration. The government says it
is designed to consolidate all IP laws
and to resolve outstanding IP concerns
highlighted in the WTO accession talks.
In fact, Part IV would not be a step forward,
but instead several steps back
from this goal.
Analyses of Part IV by my organization,
the Coalition for Intellectual
Property Rights (CIPR) and several
other IP organizations, law firms and
legal experts, have determined that Part
IV would be inconsistent with international
treaties, as well as failing to
bring Russia into compliance with
TRIPs. The draft law would nullify all
existing special IP laws, including the
Law on Copyrights and Neighbouring
Rights, the Law on Patents and the
Law on Trade Marks, Service Marks
and Appellations of Origin.
A number of major concerns surround
Part IV. The new law will grant
legal protection to domain names,
which is contrary to international
norms. It will implement discriminatory
treatment of the copyrighted works of
US and other foreign nationals. It provides
no clarity on the definition of the
standard of confusion requirement to
prove infringement. It limits the scope
of exclusive rights of copyright owners
in a way that is inconsistent with international
treaties. It imposes joint liability
on both the licensee and licensor of a
trade mark for the product of a licensee.
It maintains an absolute priority of
appellations of origin over trade marks,
which is contrary to a 2005 WTO
panel decision. It does not provide for
opposition procedures and it suffers
from vague and confusing language on
legal remedies for pirated and counterfeited
goods. This is just an abbreviated
list of IP owners’ concerns.
If enacted, Part IV would go into
force in 2008. In the interim, the legislative
process on all other IP laws
would come to a standstill. Instructions
and procedures would need to be developed
to clarify prevailing IP laws for
the courts and prosecutors. Confusion
among rights owners about the application
of IP law will ensue.
The high level political support from
the Presidential Administration for Part
IV will be a key factor in the ensuing
legislative debate. Rights owners will
have the opportunity to participate in
the upcoming public hearing in early
October and IP advocates have been
selected to participate in the legislative
working group to evaluate proposed
amendments. This follows a period in
which rights owners were rarely consulted
by the government. The review
and approval process for amendments
could be completed – and a second
reading of Part IV could take place –
before the end of 2006, or in early
2007.
Rights owners, intergovernmental
organizations and WTO member states
should continue to be concerned about
the future outlook for IP protection in
Russia and take action. The outcome of
the Part IV legislative process over the
course of 2006 and possibly into 2007
will determine how IP protection is
legally defined for several years.
Rights owners should individually
and through their affiliations with IP
rights groups such as INTA, IACC and
MARQUES, communicate their concerns
about Part IV to their governments.
They should also ask their
Russian representatives to work with
CIPR and other IP rights groups on the
ground in Russia to address their concerns
to the State Duma.
The Russian Federation should be
admitted into the WTO. Further integrating
one of the largest and important
countries in the world into the
international economy is in the interest
of Russia and of all WTO member
states. A major step in this process is to
ensure that IP protection for Russian
and international rights owners is based
on uniform standards and practices.
Tom Thomson, executive director, Coalition for Intellectual Property
Rights