A trade mark is a designation used to distinguish goods and services.

For many companies, a trade mark is one of their most valuable assets. Any unauthorised use of

a trade mark may cause significant financial and reputational harm to the rights holder.

With the development of e-commerce, a substantial proportion of infringements has moved

online, as modern information technologies make it possible to sell goods without significant

capital investment. These technologies are used to distribute counterfeit products and grey

imports, create fraudulent schemes and phishing resources, and disseminate pirated software and

audio and video content.

To minimise the risks arising from unauthorised use of a trade mark, it is necessary to ensure its

protection, including online. Online trade mark protection involves the timely detection of

infringements and their prompt removal.

Risks for Rights Holders

The unauthorised use of a trade mark may cause substantial financial and reputational losses to

the rights holder. The principal risks include:

• Declining sales of genuine products
• Increasing sales of counterfeit products
• Reduced traffic to official websites
• Significant damage to brand reputation
• Brand dilution

According to statistical data, approximately 60,000 trade marks are registered in Russia every

year, while Internet users register more than 500,000 domain names.

The e-commerce market and the online promotion of goods and services are therefore continuing

to grow. At the same time, the risks of infringement of intellectual property rights, including

trade marks and copyrighted works, are also increasing.

By the end of 2018, the Russian e-commerce market had exceeded RUB 1.5 trillion. Experts also

expected the market to continue growing in 2019

How Trade Mark Protection Is Provided in Russia

When launching a product or service, a company should be prepared for its brand to face

potential threats, regardless of the size of its business. There are numerous examples of both

lesser-known brands and young start-ups being targeted.

It is therefore necessary to implement a comprehensive set of measures to protect a brand both

online and offline.

The growing use of the Internet has increased the number of cases involving the unauthorised

use of rights holders' intellectual property. Infringements occur on a large scale through domain

names, online stores, social media and marketplaces.

Specialised software is required to identify such infringements, while qualified legal assistance is

necessary to stop them effectively.

The number of online infringements involving a single trade mark may exceed 8,000 URLs per

month.

Rights holders should therefore engage specialist organisations that not only monitor online

resources, but also have strong legal expertise enabling them to stop infringements effectively at

the pre-litigation stage and, where necessary, represent the rights holder before the courts.

According to the article, Gorodissky & Partners is the only law firm in the world using this

particular approach. Its platform for online monitoring and pre-litigation enforcement is called

GIPSECURITY.

How the Gorodissky IP Security Platform Works

GIPSECURITY is proprietary software designed to monitor online references to a brand and

identify infringements continuously, 24/7, across the following modules:

• Domain names
• Search results and online stores
• Contextual advertising
• Messaging applications
• Mobile applications
• Marketplaces
• Social media

Legal protection is provided by a team of experienced lawyers who, where necessary, offer

highly qualified advice and represent rights holders both at the pre-litigation stage and before the

courts.

The firm also has extensive experience in conducting test purchases and organising enforcement

raids together with the police. This makes it possible to combat infringers and stop the

production of counterfeit goods not only in Russia, but also in the countries of the Eurasian

Economic Union.

Where GIPSECURITY experts identify the unauthorised online use of trade marks by third

parties, they take a range of specialised measures to stop the infringement.

To begin monitoring and enforcement work, the GIPSECURITY team requires a power of

attorney from the rights holder and the relevant trade mark registration certificate.

GIPSECURITY provides proactive protection for your intellectual property and your company’s

online reputation.

11 July 2019