- representing Bayer HealthCare in complex disputes on infringement of the client's patent rights and compulsory licensing against Russian generic companies
- representing one of the world's largest retailers of furniture and household goods in a copyright dispute. Author of the image from Shutterstock sued the client for the copyright infringement for the use of this image on the bedlinen sold in client's online-store. Claimant asked for the compensation in the amount of double cost of the goods. Claim was fully denied as the legal use of the image had been proven. We provided the evidence that the disputable bedlinen was manufactured in China under the license obtained from Shutterstock’s Chinese affiliate
- successfully protecting the interests of one of the world's largest retailers of furniture and household goods in a complex dispute related to a trademark registration and trademark infringement dispute which was successfully resolved by signing a settlement agreement
- successfully protecting the interests of SAMSUNG ELECTRONICS CO., LTD vs. LG Electronics Inc. on challenging the registration of the QLED trademark owned by LG. The Chamber for Patent Disputes of the Russian Trademark Office (Rospatent) satisfied our opposition and invalidated the QLED trademark owned by LG. Rospatent’s decision was challenged by LG in Russian IP Court, but the court upheld Rospatent’s decision. Rospatent and the IP Court supported our arguments that QLED is a generally accepted term used in the field of digital electronics
- representing Hubert Burda Media Publishing House in a dispute against the Russian trademark holder who sued the client for the compensation of RUB 2m for the trademark infringement. Claimant insisted on the use of its trademark “Daite 2” (“Give me 2”) during the client’s awarding ceremony. Claim was fully rejected in the courts of all instances as we prove that there was no violation of the trademark rights. The case became a positive precedent that criteria of the trademark rights violation is not only the matter of similarity of images, but also the fact of the confusion by consumers
- representing Turakovo LLC in precedent-setting case No. SIP-735/2018 in which the Presidium of the Intellectual Property Rights Court supported the position of the applicant of the cassation complaint that Rospatent does not have the right to independently change the status of an unprotected element of a trademark when considering an objection to granting legal protection to a trademark
- conducting a comprehensive legal review of software rights for the largest software developer in the world. Preparing recommendations on risk reduction, negotiations with the counterparty, as well as drafting contracts for the proper transfer of intellectual property rights from software developers in accordance with Russian legislation
- representing the largest IT company in Russia providing over 100 different IT services, in a series of cases (more than ten) in a dispute with one of its competitors over trademark use. The case has formed the court practice for the application of part 10 of Art. 1483 of the Russian Civil Code concerning entering one trademark into another
- conducting due diligence of technology companies on potential deals for the largest Russian telecommunications company
- advising one of the largest B2C banks in Russia, on a wide range of IP matters connected to the client’s business activities in Russia which involved advising on different matters of IP rights licensing as well as advising on trademark registration strategy and the protection of copyrights within PR activities, etc.
Practices
Intellectual Property and IT Law
“The lawyers give clear and precise answers which get to the essence of the issue within the set deadlines.”
The Legal 500 EMEA 2021
We offer a comprehensive range of services aimed at helping our clients to create, maintain and protect their IP rights ensuring that they effectively reach their business goals.
- Representing our clients’ interests in the courts of the Russian Federation at all levels
- Representing our clients’ interests before the Federal Service for Intellectual Property (Rospatent)
- Resolving patent disputes
- Resolving disputes arising from agreements on the creation and use of intellectual property (license agreements, franchise agreements and agreements on the creation of intellectual property objects)
- Protecting copyright and related rights, including in regard to software, the Internet and e-commerce
- Resolving disputes involving trademarks, trade names and commercial designations, including disputes over the right to domain names
- Protecting confidential information and know-how
- Resolving disputes on the violation of advertising legislation
- Resolving disputes in cases involving unfair competition
- Resolving disputes in the field of combating the spread of counterfeit products
- Drawing up and advising on license agreements and agreements on assignment of intellectual property rights, franchising, engineering agreements, R&D contracts
- Offering strategic consulting on the creation and use of intellectual property
- Developing copyright and order agreements, including agreements on the development of trademarks and software, contracts for the transfer of know-how and confidential information
- Advising on doing business via the Internet (e-commerce)
- Advising on the collection, storage, use and processing of personal data
- Advising on legal issues related to the development, use, modification and transactions with IT products
- Drafting policies and agreements in the field of information technology
- Developing and analyzing the provisions of distribution agreements, service contracts, agency and other agreements related to the protection of IP, software, personal data and confidential information
- Conducting legal audits of intellectual property objects, including for the implementation of investment projects
- Providing tax advice on transactions on the use of intellectual property
- Advising on the registration, protection and maintenance of trademarks, patents and industrial designs, as well as management of international portfolios of rights to these objects
- Patenting inventions, utility models and industrial designs, as well as assisting with trademark registration
- Registering software and domain names, drafting documents related thereto and advising on such registrations
- Advising on all issues of the protection capacity of IP objects
- Verifying trademarks for identity and similarity as well as performing patent search and expert assessment
- Registering trademarks in the Register for Intellectual Property of the Russian Federal Customs Service (TROIS)
Key contacts