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IP in a time of war

For the past few weeks, we’ve all been transfixed and horrified by events in Ukraine. Intellectual Property is obviously not the major issue in this war, yet the conflict has had serious IP ramifications.

Law firms leave

A number of major international law firms have left Russia as a direct result of the war. Amongst them, Gowling WLG, Linklaters, Norton Rose Fulbright and Squire Patton Boggs.

IP owners leave

IP-rich companies pulled out of Russia very quickly. Amongst them: Adidas, Apple, Coca-Cola, Disney, Heineken, Hermes, Ikea, Levi’s, L’Oreal, McDonald’s, Nike and Starbucks.

Some companies like Burger King and Marks and Spencer have found leaving difficult, however, because of the complex franchising arrangements they have with Russian companies. Some Russian companies have responded to the withdrawal by filing trade mark applications to register logos that look very similar to the logos of those who have left.

IP offices stop co-operating with Russia

The European Intellectual Property Office (EUIPO) cut ties with Russia because of the war, whereas the United States Patent & Trademark Office (USPTO) announced that it would terminate its Global Patent Prosecution Highway agreement with the Russian IP office, Rospatent. China’s IP Office, however, took a different approach, announcing an extension of the Eurasian Patent Organisation’s Patent Prosecution Highway (PPH).

Domain name developments

The Ukrainian registry, which is in charge of the .ua domain names, moved its servers to the EU early on. It also asked ICANN (the Internet Corporation for Assigned Names and Numbers) to disconnect the Russian ccTLDs including .ru and .su but ICANN refused, saying that it does not have the power to do this.

IP rights are curtailed, nullified even

There have been a number of developments, and frankly, they’re quite confusing, but this is our understanding:

  • There’s a document in Russia entitled “Priority action plan for ensuring the development of the Russian economy in the conditions of external sanctions pressure”.

The document sets out measures that will affect the IP rights of those who act against Russia’s interests. This document talks of “cancellation of liability for the use of software unlicensed in the Russian Federation, owned by a copyright holder from countries that have supported sanctions.” The document also proposes compulsory licensing mechanisms for computer programs and databases, giving the government “rights to an invention, utility models, industrial design in relation to computer programs, databases, topologies of integrated circuits.”

  • There’s a draft law that gives the government the power to temporarily annul the protection of IP rights.
  • There’s also a law that allows Russian authorities to exclude specific goods from IP protection, thus allowing for parallel imports and IP infringement.

The Peppa Pig case

This has been much in the news. A company called Entertainment One (part of the Hasbro group) owns the trade mark rights to a character called Peppa Pig. When Hasbro sued a Russian company in a Russian court for infringement of its trade mark, the judge ruled against it, making it quite clear that “the unfriendly actions of the USA and affiliated foreign countries” had influenced his decision. The judge said this: “In view of the restrictive measures imposed on the Russian Federation (sanctions) and the plaintiff’s status (a foreign company), the court considers the plaintiff’s actions to be an abuse of right, which is an independent ground for refusing the claim.”

Clearly, damages awards are not high in Russia – apparently, Hasbro would have been awarded the equivalent of some GBP400 in damages if its claim had succeeded. Although, as one report points out, the damages award would in fact have been worth no more than GBP230 given the dramatic devaluation of the Ruble!

The Daily Mail wades in

Some readers will be aware of the fact that the Peppa Pig character is held in high esteem in the UK. The Daily Mail had this to say about the case: “Russia has made the astonishing decision to sanction beloved cartoon character Peppa Pig and Daddy Pig as the crisis deepens over Vladimir Putin’s war in Ukraine.”

The paper went on to issue this grave warning: “The ruling by Judge Andrei Slavinsky in a provincial arbitration court in Kirov could pave the way for the mass abuse of Western trademarks and copyrights – allowing Russia to flout copyright laws by refusing infringement claims.” Followed by this: “The ruling could trigger more widespread abuse of trademarks as was common in Russia in the years after the fall of the Soviet Union in 1991.”

Let’s end with something light – the words of Boris Johnson

The Daily Mail could not let this matter go without reminding readers that the prime minister of the United Kingdom is a serious fan of Peppa Pig. According to the paper, the “Russians could have been aware of Boris Johnson’s admiration for Peppa Pig after his bizarre November speech to the Confederation of British Industry.” This was the speech where the prime minister said this: “Yesterday I went, as we all must, to Peppa Pig World… I loved it. Peppa Pig is very much my kind of place… who would have believed that a pig that looks like a hairdryer or possibly a Picasso-like hairdryer, a pig that was rejected by the BBC, would now be exported to 180 countries.”

Gaelyn Scott

IP | Trade Mark Attorney | Executive | Head of Department

gscott@ENSafrica.com