- representing Bitmain Technologies Limited and Bitmain Technologies Inc in administrative proceedings heard before Rospatent and the Intellectual Property Court. The companies contested the granting of legal protection to trademarks of Bit Trade LLC that were confusingly similar. At the moment, the decisions of the Chamber for Patent Disputes are being appealed in the Intellectual Property Court, where we are using all possible procedural methods to protect the rights of the companies, including statements about the falsification of evidence by the opponent, petitions for the collection of evidence, and others
- representing HeadHunter in a dispute over the early termination of legal protection of a similar trademark of the opponent in the Intellectual Property Court. In an extremely short time frame, as required by law, our team prepared and filed a statement of claim for the early termination of legal protection of the opponent's trademark. In addition, we managed to achieve the adoption of interim measures by the court in the form of a ban on Rospatent making a decision on the client's application for a trademark, which made it possible to avoid additional administrative proceedings in Rospatent
- representing of the interests of Pobeda Confectionary Factory in connection with the impossibility of expanding the legal protection of previously registered trademarks and registering new trademarks for its products due to the unfair activities of the “patent troll” Novye Tekhnologii LLC, which for many years has been filing mass applications for the registration of trademarks similar to the well-known Pobeda brand, owned by Pobeda Confectionary Factory LLC. Based on the results of the work carried out, we developed a comprehensive strategy for combating our client's opponent, which provided for the simultaneous use of several methods of legal protection
- advising one of the largest international companies - a manufacturer of soft drinks on the issue of recognizing trademarks as well-known, developing a detailed strategy for recognizing selected trademarks as well-known (this strategy is currently at the implementation stage)
- obtaining registration for the Russian division of an international investment and development group of companies of a series of trademarks used in the construction and operation of a business quarter in Moscow, as well as protecting the client's interests in the Chamber for Patent Disputes of Rospatent and in the Court for Intellectual Property Rights in connection with the refusal to register trademarks
- advising a world-famous Italian fashion house, a manufacturer of clothing, perfumes, accessories and luxury textiles on issues of maintaining valid trademarks and recognizing a trademark as well-known, as well as successfully obtaining the registration of a series of trademarks
- advising the client and providing further support for the process of registering software, which is a service for conducting payments and ensuring data transfer between payment terminals and banks, in the register of Russian computer programs and databases
- providing legal support for the launch of a digital service for the client on the Russian market, which was a service for personnel records of employees and preparing local orders and documents. The project included an assessment of the software monetization model and the development of a contractual licensing model based on it, preparation of user documentation for the service, assessment of regulatory risks and requirements of Russian legislation for owners of Internet services
- conducting a legal audit (Due Diligence) for the Client of a company acquired under a transaction that provides cloud computing services (IaaS), including on issues of software use, as well as on regulatory issues of the activities of the acquired company, in particular the availability of licenses and permits required by law for the provision of cloud computing services
- 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
- 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 Russian courts at all levels
- Representing clients' interests before the Federal Service for Intellectual Property (Rospatent), Federal Antimonopoly Service (FAS) and UFAS
- Patent disputes
- Representing clients' interests in 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 those for computer programs, including the Internet and e-commerce
- Representing clients' interests in disputes on the protection of rights to trademarks, company names and commercial designations, including disputes on the right to domain names
- Protecting confidential information and know-how
- Representing in disputes on the violation of advertising legislation
- Representing in disputes on cases of unfair competition
- Representing in anti-counterfeiting cases
- Preparing agreements in respect of intellectual property
- Providing legal support for technology transactions (Tech M&A)
- Strategic consulting on the creation, management and protection of intellectual property
- Structuring the commercialization of intellectual property in Russia and foreign jurisdictions
- Advising on e-commerce issues
- Advising on business digitalization and AI implementation
- Advising on regulatory requirements of IT issues
- Conducting intellectual property audits and optimizing intellectual property portfolios
- Tax consulting in connection with intellectual property and digital assets
- Registration trademarks and maintenance of legal protection of trademarks
- Patenting inventions, utility models and industrial designs, as well as maintaining patents in force
- Registering software and databases in Rospatent and the Register of Russian Software
- Conducting searches for trademarks, patent searches and checking the legal purity of IP objects
- Registering rights from contracts in relation to intellectual property
- Registering IP objects in the Customs register of intellectual property objects (TROIS)
Key contacts