mardi, novembre 23, 2010

Russia: IP legislation becomes WTO ready

IP legislation becomes WTO ready

Contributed by Baker & McKenzie - CIS Limited

 

Introduction
Amendments to Federal Law on Licensing Certain Types of Activity
Changes to Part IV of Civil Code
Comment


Introduction

A series of changes has recently been introduced into the IP legislation in order to bring it into line with international agreements – including the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) and the Berne Convention for the Protection of Literary and Artistic Works – and to fulfil the requirements for accession to the World Trade Organisation (WTO).

Among other things, the amendments:

·                          tighten the licensing regulations for enterprises producing optical media;

·                          provide for the free reproduction of phonograms and audiovisual works for personal purposes; and

·                          regulate the relationship between domain names and trademarks.

This update outlines the substantive changes made to Part IV of the Civil Code, the Federal Law on Licensing Certain Types of Activity and the Procedure for the Collection and Distribution of Remuneration for Free Reproduction of Works for Personal Purposes, which was recently established by a government resolution.

Amendments to Federal Law on Licensing Certain Types of Activity

The amendments to the Federal Law on Licensing Certain Types of Activity will enter into force on December 6 2010.

The law tightens the licensing regulations for enterprises producing optical media containing protected copyright. Thus, according to the amendments made to Article 9.3 of the law, juridical persons shall be denied a licence for the reproduction of audiovisual works, computer programs, databases and phonograms on any kind of media if such a licence has previously been withdrawn.

Furthermore, Article 17.2 of the law stipulates an additional requirement for receiving a licence, namely that the equipment used for the reproduction of audiovisual works, computer programs, databases and phonograms on any kind of medium, must be owned.

Changes to Part IV of Civil Code

On October 19 2010 the Federal Law on the Introduction of Changes to Part IV of the Civil Code of the Russian Federation (259-FZ, October 4 2010) came into force.

The following amendments have been made to Part IV.

Restriction of exclusive rights to results of intellectual activities and means of individualisation
The amendment to Article 1229 of the Civil Code specifies a substitution of the general provisions of Article 1229(2)(5) of the Civil Code on the restriction of exclusive rights to the results of intellectual activities and means of individualisation with provisions duplicating certain restrictions of exclusive rights to scientific, literary and artistic works and related rights, inventions, industrial designs and trademarks, established respectively by Articles 13, 17, 26 and 30 of the TRIPs Agreement.

Free reproduction of work for personal purposes
The changes made to Article 1273 of the Civil Code are intended to consolidate the regulations, stating that free reproduction is allowed only when necessary. In addition, a reference to Article 1245 of the Civil Code included in new Article 1273(2) of the Civil Code establishes a right to remuneration for authors, performers and phonogram recorders for the reproduction of phonograms and audiovisual works for personal purposes.

According to Article 1245 of the Civil Code, such remuneration is to be collected and paid to rights holders from the funds of manufacturers and importers of equipment and tangible media used for the playback of phonograms and audiovisual works.

The list of equipment and tangible media, rates and the procedure for collection and distribution of the relevant remuneration are established in the Resolution on Remuneration for Free Reproduction of Phonograms and Audiovisual Works for Personal Purposes (829/2010), which came into force on October 26 2010. The resolution is valid until the Agreement of the Customs Union Members of the Eurasian Economic Community comes into effect.

According to the resolution, the approved list of equipment and tangible media includes computers, audio and video recording and playback equipment, radio receivers, telephones (including mobile phones), recorders, video and DVD players, films, recording media and compact discs. The rate of the remuneration is 1% of the selling price or customs value of every unit of goods. To make a payment, a manufacturer or importer should enter into an agreement with the accredited collection management society. On October 26 2010 the Russian Union of Rights Holders (RSP) was officially accredited as the collection management society that will represent authors, performers, phonogram recorders and audiovisual works producers in the collection and distribution of remuneration for reproduction of phonograms and audiovisual works for personal purposes.

Under the general rule, the manufacturer should contribute funds quarterly no later than on the 10th day of the month after the reporting period. A report on sales of respective products should be submitted to the accredited organisation by the same day. Manufacturers calculate the amount of remuneration by multiplying the defined rate on the selling price of a unit by the number of units sold during the reporting period. Remuneration is not taken from exportable equipment and tangible media, or equipment and tangible media not intended for home use.

The importer should inform the accredited organisation about imports of goods within 10 working days of the day of their placement into the customs regime for goods placed on the internal market. The report on the import of goods should contain descriptions of the goods and their quantity, the customs value and the respective codes of the Harmonised Commodity Nomenclature for Foreign Economic Activities of the Customs Union.

The importer should also provide the accredited organisation with documents confirming the placement of goods into the customs regime for release for domestic consumption. The Federal Customs Service also provides the accredited organisation with information on the corresponding importers and the commodity classification of the equipment and tangible media released for internal use. Within 20 working days, the accredited organisation should compare the information received from the importers with the customs report and inform the importer of the sum payable. Payment should be made within 10 working days of the importer receiving such information.

The collected remuneration is to be distributed as follows:

·                          40% to the authors of audiovisual works and of works fixed in phonograms;

·                          30% to the performers; and

·                          30% to the manufacturers.

The distribution of remuneration is to be performed in proportion to the actual use of phonograms and audiovisual works within the period stipulated by the charter of the accredited organisation, but at least once a year.

Technical means of copyright protection
The words "except cases when, under the present code, the use of a work is allowed without the consent of the author or other right holder" have been removed from Article 1299(3) of the Civil Code. The changes are designed to reinforce copyright protection (ie, to ensure that manufacturers of technical aids intended to disable copyright protection are held liable).

Compulsory licence for inventions containing semiconductor technology
The changes made to Article 1362 of the Civil Code bring it into line with the requirements of Article 31(c) of the TRIPs Agreement regarding the limitation of cases of compulsory licensing with regard to inventions containing semiconductor technology. Compulsory licensing regarding inventions containing semiconductor technology is permitted only in cases of non-commercial use of such inventions for state, social and other public purposes, or to correct a breach of the anti-monopoly law.

Prior domain name no obstacle to registration of identical trademark
The changes made to Article 1483(3)(3) exclude the possibility of rejecting an application to register a trademark that is identical to a previously registered domain name. Such a change was necessary as the TRIPs Agreement does not qualify a domain name as an IP object, and therefore no grounds exist for an IP object to oppose a trademark.

Designations identifying goods as coming from certain geographical territory
The changes made to Article 1516 of the Civil Code, bringing it into line with Article 22 of the TRIPs Agreement, provide legal protection to designations that, although they do not contain a name of geographical origin, still identify a product as coming from a given territory. This protection is provided by the fact that such designations fall under the purview of the regulations on appellations of origin, as set out by Part IV of the Civil Code.

Comment

The amendments to the IP legislation are an important step towards compliance with international standards and treaties. The Russian IP legislation is now WTO ready.

For further information on this topic please contact Eugene Arievich or Alisa Fomina at Baker & McKenzie - CIS Limited by telephone (+7 495 787 2700), fax (+7 495 787 2701) or email (eugene.arievich@bakermckenzie.com or alisa.formina@bakermckenzie.com).