Expocentre For Counterfeit-Free Exhibitions
Expocentre AO is launching a new project - Expocentre For Counterfeit-Free Exhibitions – aimed at fighting infringements of exclusive rights to IP assets. The project was established just after the launch of the Expopriority Forum and has become a logical addition to it. The key objective of the project is to reduce considerably the number of exhibitors at Expocentre’s exhibitions who are showcasing counterfeit products infringing on exclusive rights of other companies which all too often take part in exhibitions alongside the infringers.
This problem has recently been receiving a growing amount of publicity. For instance, the Global Association of the Exhibition Industry (UFI) recommends exhibition organizers to actively engage in tackling this challenge by, among other things, providing exhibitors with up-to-date information on and clarifications of various IP issues.
The practice of similar projects run in lots of other countries showed that they are very effective. This can be seen, first of all, in a significantly reduced numbers of counterfeit products showed at exhibitions and, in consequence, in fewer conflicts between exhibitors. These programmes make exhibitions more transparent for participating companies-owners of IP rights in the way that it is easer for them to monitor the situation and not only to expose infringements but also to receive prompt legal assistance. This will help to limit access to exhibitions for potential infringers of third parties’ exclusive rights who mostly fear to show their ware at the exhibitions implementing this kind of anti-counterfeit programmes. As a result, the decrease in the numbers of potential offenders will inevitably encourage the influx of law-abiding businesses, who consider exhibitions implementing this type of counterfeit-fighting programmes more appealing.
One thing that separates the Expocentre For Counterfeit-Free Exhibitions project from similar projects run in Russia is that it is permanent. Today, the majority of IP-dedicated events are held several times a year. They may be accompanied with a number of sessions and round-tables. It’s quite obvious that this is only enough for industry lawyers and patent attorneys, and they constitute the majority of the audience at these events. However, companies operating in Russia, whose staff, in most cases, has not got specialist knowledge in the IP field, need to get help when they have encountered a problem.
The Expocentre’s project, providing its exhibitors with legal assistance at all times during exhibitions organized by Expocentre AO and its partners (if they join in), will create a new networking format for participants in exhibitions. This will result in a higher level of responsibility and threat-awareness among exhibitors in terms of demonstration of their products at exhibitions.
As part of this project Expocentre is not only focusing on implementation and promotion of new services. It pays equal attention to the currently available services such as the certificates of demonstration of products and trademarks at Expocentre’s exhibitions, and specialist sessions on the issues of IP protection for products showcased at exhibitions.
Modern IP Challenges
One IP challenge in relation to exhibitions is infringement of exclusive rights to intellectual property assets at exhibitions in the Russian Federation. This leads to conflicts among exhibitors and between exhibitors and third parties.
In most cases this problem could be avoided given exhibitors knew the provisions of the Russian IP legislation, particularly where it concerns trademarks and patents. Informing exhibitors and visitors about the current IP laws and practice would provide them with a comprehensive and realistic idea of the IP enforcement mechanisms.
Another important issue is an obligation for the owners of registered trade marks to use them once a fixed term from the date of their registration has ended. In the case of a dispute about the use of a trade mark in the Russian Federation, the rights owner should submit the proof of use to a court. Moreover, the trade mark should be used by the rights owner himself or by another party licensed by the rights owner. Since the demonstration of products bearing a registered trade mark at exhibitions is a separate way of using a trade mark under the Russian legislation, the confirmation of the demonstration can be considered as a sufficient proof of use of the trade mark. This type of evidence of the demonstration at exhibitions is particularly important for the rights owners who have already registered their trade marks in the Russian Federation, but, due to various reasons, have not yet started to sell the goods marked with those trade marks in Russia, though they have already displayed them at exhibitions. If, for instance, a company is selling its products under a registered trade mark in other countries, but it has not put them into civil circulation in the Russian Federation, the demonstration of these products at an exhibition in Russia and confirmation of the demonstration should help the rights owner avoid problems related to the use of the registered trade mark in the Russian Federation.
Yet another challenge is that many business people showcasing their products at exhibitions have no idea how to get protection for their intellectual property and of mechanisms of its enforcement; they are even not aware of the need to do this. Practice shows that many businesses including big ones apply for registration untimely, or do not apply for it at all. Naturally, this leads to a total inability of companies to protect their products from copying by competitors.
IP Protection and Enforcement in the Russian Federation
First, it is necessary to define what intellectual property is.
Trade mark is a sign used to distinguish between goods and/or services of different legal entities and sole traders. It can be words, logos or a combination of both. The legislation allows registration of other signs, for example, multidimensional or sound ones.
Invention is a technical solution in any area related to a product (including a device, substance, microorganism strain, cell culture of plants or animals) or method (process of affecting a material object using material means).
Utility model is a technical solution related to a device.
Industrial design is an artistic and design presentation of an article, manufactured industrially or by artisans that defines its outward appearance.
The above mentioned items are subject to compulsory registration in each country where the rights owner wants to get IP protection.
Copyright materials, particularly software and databases do not require mandatory official registration, though they can be registered if the rights owner wants to have a registration for them.
Trade secrets or know-hows are also considered intellectual property, however, since these items are protected by confidentiality agreements, information about them is not available to general public and infringements of exclusive rights to them are hardly ever related to the owner’s participation in exhibitions.
To be able to restrict the number of people who have the right to use their IP assets, the rights owners shall apply for IP registration to the appropriate government bodies and get a protective document in each country where they want to have IP protection.
IP Enforcement Actions
Court. In case of infringement of exclusive rights, the rights owner is entitled to apply to the court of the Russian Federation for the protection of their rights and interests with a demand to grant an injunction against the offender and to claim damages.
Customs authorities. In the Russian Federation, the rights owner can apply to the customs authorities for inclusion of a trade mark into the Customs Register of the Russian Federation. This is mostly a preventive measure aimed to stop imports of goods bearing similar or identical marks by foreign contractors. In this case, the customs authorities will inform the rights owner about all seizures of unauthorised imports of goods marked with identical or similar trade marks.
Antimonopoly service. Applying to the antimonopoly service allows protecting IP rights not only for those who have already registered them, but also for those who, due to various reasons, have not done that yet, while their products have already been disclosed to the public and are associated in the public’s mind with certain companies.
Tackling Modern IP Challenges
Over the recent years Expocentre AO, as part of its exhibition activity, has been working to tackle a number of challenges in the IP field facing the owners of exclusive rights to intellectual property assets.
In particular, we assist persons who want to take advantage of the opportunities offered by the legislation and apply for ‘exhibition priority’ for trade marks and ‘exception to lack of novelty’ for patentable objects.
We can state that the number of such applications is growing every year, which demonstrates the importance of the assistance and the need to continue promoting this kind of projects.
However, Expocentre is determined to help its exhibitors not only register new IP objects, but also enforce existing IP rights.
In this connection, a decision had been taken to introduce a new way of assisting our exhibitors that is to grant them certificates of demonstration at Expocentre’s exhibitions of goods bearing trade marks registered in the Russian Federation.
We believe that these certificates will help law-abiding owners of trade marks protect their rights in the Russian Federation if claims for early termination of their exclusive rights in trade marks are filed against them.
Moreover, this practice may encourage exhibitors to showcase more goods at our exhibitions which will certainly enhance the quality of our events and make them more appealing.
And Expocentre For Counterfeit-Free Exhibitions is definitely at the spearhead of our efforts.
In the course of implementing this project Expocentre will run consultations for exhibitors and visitors of Expocentre’s own exhibitions and exhibitions of its partners (if they join in) to keep them informed of the opportunities offered by the Russian legislation for protection and enforcement of IP rights, and about what constitutes IP rights infringement. This will enable visitors and exhibitors to assess legitimacy of their own and competitors’ activity to minimize the chances of their infringing on other parties’ exclusive rights.
On request, exhibitors can get clarifications on IP issues, including issues of showcasing IP assets at exhibitions. Clarifications can be about general provisions of the Russian legislation on demonstration of IP items at exhibitions and about specific issues related to the activity of exhibitors.
It is worth noting that Expocentre will not take part in the settlement of disputes between exhibitors, although it can provide contact information of the relevant government bodies responsible for settling issues and disputes, and commercial consultants, who can act as representatives of the parties.
If exhibitors are well-informed of the provisions of the current Russian legislation, they will be able to make sound decisions about showcasing their goods at exhibitions held in the Russian Federation. First of all, they will get an opportunity to objectively assess the chances of protecting their rights and interests within the Russian IP legal framework. A big challenge is an issue of infringement of third parties’ rights by exhibitors themselves. So, a prompt consultation in the run-up to or even during an exhibition will enable exhibitors to resolve most disputes or, at least, clear up any doubts that may arise.
The issues covered at the consultations are:
- the scope of exclusive IP rights;
- distinguishing features of the Russian IP legislation;
- ways of enforcement of exclusive rights;
- exhibitions as an opportunity to obtain a proof of the proper use of a trade mark etc.
One of the major advantages of the Expocentre For Counterfeit-Free Exhibitions project is the consultations available on-the-spot. There is no need to urgently seek a consulting company able to give practical advice on the issue. And not only that. As it was mentioned before, this will be a permanent project. Instead of running as part of one event, it will be running throughout the year at all exhibitions organized by Expocentre AO.
The international practice of realizing such projects shows that the numbers of counterfeit products on display at exhibitions go down steadily. What is more, these projects are raising awareness of exhibitors to the existing threats. They start to act with due care when they are introducing new products to the market, in particular in terms of packaging and naming. As for unscrupulous companies consciously infringing IP rights by selling counterfeit products, they also have to abandon their practices in favour of legitimate alternatives.
Statistics shows that since such projects were put into practice at foreign exhibitions, the number of counterfeit products exhibited there has gone down by more than 60%, while the number of exhibitors willing to put on display their authentic products has increased considerably, which could not but improve the performance of the shows.
At the same time, active campaigning to raise awareness of available ways to protect intellectual property among exhibitors has led to an almost 10% growth in the number of applications for registration of various industrial property objects filed to national patent offices.
To implement the project in full Expocentre AO has made amendments in the General Terms of Participation in Exhibitions Held at Expocentre Fairgrounds by introducing clause 17 there. For instance, Expocentre has added a provision on early unilateral termination of agreements with exhibitors if they are showcasing goods or services that have been prohibited from civil circulation in Russia by a court’s injunction:
If the Exhibitor is showcasing at an exhibition organized by the Company the goods and services that are prohibited from civil circulation in the Russian Federation by the ruling of a court, the Company is entitled to unilaterally terminate the Participation Agreement with the breaching Exhibitor by sending a written notice to the breaching party. The amounts paid by the Exhibitor under the Agreement are forfeited for breaching the Agreement. All the invoices in excess of the amounts already paid for services shall be paid by the latter in due course. Breaching of this condition is subject to clause 15.2 of the General Terms of Participation.’
So, we can state that this project push the boundaries of Expocentre’s activity in the IP field. The key services under the project are:
- consultations on and clarifications of various IP issues for exhibitors and visitors of exhibitions organized by Expocentre AO;
- seminars and conferences on IP registration and enforcement;
- cooperation with government agencies and commercial organizations engaged in IP registration and enforcement;
- certificates confirming the demonstration of products bearing registered trade marks (proof of use) at exhibitions;
- certificates confirming the demonstration of exhibits or trade marks at exhibitions;
- assistance in finding contacts with the relevant government agencies and consulting companies.
On the whole, we are positive that the implementation of this project will enhance the competition among the market players, where the competitive edge will be gained through improved quality of companies’ authentic products, instead of sales of other companies’ goods at a cheaper price. These goals will be achieved by raising awareness of the problem among the owners of exclusive rights, thus enhancing the monitoring of the situation. We believe that achieving these goals will make exhibitions held in the Russian Federation more appealing for those foreign companies that have not yet entered the Russian market due, among other things, to the existing IP infringement issues.