Intellectual property in Russia
Complex patent litigation is the bedrock of the IP practice at Baker & McKenzie - CIS, Limited. Recent highlights for the team include successfully enforcing the patent rights to one of Gilead Pharmasset's medications for the treatment of HIV, Sovaldi, in a revocation action brought by a local producer. Practice head Denis Khabarov and Eugene Arievich are 'two of the best-known figures in the Russian IP market'. Margarita Divina and Pavel Gorokhov specialise in transactional and contractual IP, trade mark registration and portfolio management. Counsel Darya Ermolina is of note for trade mark, patent and design disputes.
‘It has consistently been the number one practice in the area of IP and technology in Russia for many years. Their experience is very broad, extending from IP commodity work, such as trade mark registration and searches, to the most complex contentious and transactional matters. They are the go-to team in most complex cases, be it complicated transactions or serious trade mark and patent litigation.’
‘Denis Khabarov is one of key players in the IP market in Russia. His advice is very clear, practical and helpful, while his litigation skills are superb.’
‘Margarita Divina is an IP transaction guru who is best known for complex technology and IP-heavy transactions and franchising deals.’
‘Eugene Arievich is a top lawyer who is still the best-known name in IP private practice in Russia’
‘Pavel Gorokhov is always very responsive and client-oriented with a practical approach to each issue. He is able to build efficient strategies on trade marks, always bearing in mind the business needs of the client.’
Gilead Science Inc.
Association of Corporate Lawyers
Champagne Louis Roederer
- Representing Gilead Pharmasset in enforcing the patent rights to its blockbuster medication Sovaldi (Sofosbuvir), effective for the treatment of HIV, in an action brought by Pharmasyntez, a local generic medication manufacturer.
- Assisted Starbucks Corporation in its portfolio management, including advising on protection strategies, preliminary clearance, trade mark prosecution and enforcement.
- Represented Christian Louboutin in a trade mark infringement dispute with a local retail importer over the brand’s iconic shoes.
Well known for its wealth of expertise in trade marks, copyright, data protection and patent litigation, Bryan Cave Leighton Paisner (Russia) LLP's practice is led by disputes specialist Elena Trusova. Counsel Evgeny Oreshin specialises in intellectual property disputes, particularly those involving trade mark infringement, patents and domain names. Anton Nefedev is also recommended for IP issues regarding technology and software.
‘Their practice in IP and data protection is very strong. They have the resources and experience to answer our questions in a timely manner with reasonable fees.’
‘Elena Trusova, Irina Shurmina and Evgeny Oreshin are a great team of professionals possessing knowledge of the industry. They have an active involvement in client projects and are interested in achieving optimal results for their clients. Their long-term vision and strategy – confirmed by their readiness to work on pro bono projects with a social aspect – allows them to achieve sustainable results and gain personal visibility in the market, as well as to build stable relationships with clients.’
Prosveshcheniye Publishing House
Tokyo Broadcasting System Inc.
Teva Pharmaceutical Industries
- Acting for Prosveshcheniye Publishing House in several trade mark disputes.
- Acting for Double Data in a precedent-setting dispute with the VKontakte social network over the use of big data and the functioning of search engines.
- Advised the Association of International Pharmaceutical Manufacturers on drafting new legislation on the regulation of pharmaceutical advertising.
Dentons' full-service IP practice is spread across the Moscow and St Petersburg offices and advises on a myriad of IP matters, including trade marks and design, patents, computer software, trade mark portfolio management and licensing. Victor Naumov is the primary figure in St Petersburg, where he focuses on IP protection strategies, transactions involving IP assets and regulatory issues in the technology, media and artificial intelligence sectors. Moscow-based Denis Voevodin has extensive experience acting in trade mark and copyright litigation proceedings as well as advising on anti-counterfeit activity.
Russian Venture Company
Apps & Games AS (Bemobi International AS)
- Assisted MTS telecoms provider with the development of a unique system for identifying and assessing the legal risks related to intellectual property.
- Assisting Rosatom in the management of its patent portfolio in Russia, China, Japan, Korea, the EU and the US.
- Advising Apps & Games (Bemobi International) on IP transactions related to the launch of certain entertainment apps and services provided by mobile operators in the CIS region.
Egorov Puginsky Afanasiev & Partners is noted for its 'great knowledge of the industry and great connections all over Russia' and is a 'go-to firm' for global brands, technology companies and pharmaceutical clients for the full range of IP matters, from the registration of IP rights and patents to the commercialisation of IP, licensing and trade mark prosecution. The team also handles advertising law disputes, particularly those related to the infringement of IP rights, confidentiality issues and violation of cryptographic services laws. Trade mark and patent attorney Pavel Sadovsky heads the team and focuses on enforcement, transactional IP and data protection. Irina Kosovskaya is a 'perfect match' for litigation with the Federal Service for Intellectual Property (Rospatent), acting for Russian and international clients in the field of trade marks, industrial design, technology and software. Other key figures include associate Maxim Burda, who is recommended for IP protection from piracy, counterfeiting and cybersquatting. Dmitry Dyakin left the firm in 2020.
‘The company is one of the leading law firms in the Russian market, is highly rated and is specialised in the relevant fields of law. The team’s strengths are professionalism, attention to detail and quality.’
‘Always ready to assist. Always offer a few alternative strategies with a detailed description of every course of action. Great knowledge of the industry and great connections all over Russia. If evidence has to be collected fast, they definitely are the go-to team.’
‘Pavel Sadovsky and Irina Kosovskay make a formidable team. Pavel Sadovsky has extensive experience in counselling on intellectual property issues; he is flexible and proactive. Irina Kosovskaya is a professional with excellent industry knowledge, a result-driven person.’
‘Irina Kosovskaya is a perfect match if you are looking for a disputes attorney for court or Rospatent matters. She is calm, self-assured, smart and always finds a way to win. She never gives promises she cannot keep and can be relied upon in complex issues’
Boslita (CORA S.P.A.)
Petersburgsky Traktorny Zavod
- Assisted Abrau–Durso, a Russian wine manufacturer, with registering a trade mark for ‘Abrau Junior’, a new product line of carbonated non-alcoholic beverages based on grape juice.
- Represented Cora, an international wine producer, in a trade mark infringement dispute and in taking anti-counterfeit measures against a local wine manufacturer in the Kabardino-Balkar Republic.
- Continuing to advise Formula One Management on IP rights protection and contentious trade mark issues.
Natalia Gulyaeva heads the 'very reputable and knowledgeable team' at Hogan Lovells (CIS), which has 'exceptional understanding' in the area of patents, trade marks and designs. The team has a wealth of expertise in contentious IP, with a focus on patent litigation and trade mark prosecution, as well as in transactional IP, portfolio management and the commercialisation of IP rights. Counsel Vironika Pilyugina frequently represents local and international clients in patent and trade mark infringement disputes before Rospatent and the Chamber of Patent Disputes.
‘Exceptional understanding of the industry and its problems, which gives them the unique ability not just to advise on the topic but to know which solution will serve the client best.’
‘Very reputable and knowledgeable team with deep knowledge and a proactive approach.’
‘The strength of this IP team is tremendous and they are full of great insight and knowledge. They are responsive all the time, and efficient in their turn around. A great team to work with!’
‘Natalia Gulyaeva is a queen of IP. Exceptionally intelligent and confident, she is ready to advise on the spot on the issues which are not clear at first sight. She is a strong leader and her team are great professionals who are not only skilled lawyers but also inspiring personalities.’
Bristol-Myers Squibb Holdings
- Advising McDonald’s Corporation on the management of its trade mark portfolio in Russia and the CIS region, and also assisting with day-to-day advice on trade mark watch notices and brand misuse.
- Advising Lego Group on trade mark, copyright and patent enforcement and anti-counterfeit measures in Russia and other CIS countries, particularly Ukraine, Belarus, Kazakhstan and Kyrgyzstan.
- Representing Bristol-Myers Squibb in numerous court disputes, including a patent infringement case against a generic drug manufacturer; a dispute with a generic drug distributor; and a compulsory licence case, where Bristol-Myers Squibb is involved as a defendant.
Best known for its strength in trade mark and industrial design registration, Gorodissky & Partners has recently expanded its IP protection offering with the launch of Gorodissky IP Security, an online platform to assist IP rights owners with monitoring trade mark infringements and taking enforcement action against the distribution of counterfeit goods. Core areas of expertise include portfolio management, IP enforcement and prosecution, trade secrets, personal data and IP issues related to cloud computing and e-commerce. Practice head Sergey Medvedev was promoted to partner in January 2019, and is assisted by 'very capable and bright' associates Ilya Goryachev and Sergey Vasiliev.
‘All the elements of our relationship with Gorodissky are great, from the quality of the advice to the presentation of information. Clear and client-focused communication, and the team never miss a deadline’.
‘Associates Ilya Goryachev and Sergey Vasiliev are both very capable and bright lawyers’
Shchelkovo Biocombinat, FSE (Russia)
- Represented Ubisoft Entertainment in several copyright infringement disputes and co-ordinated anti-piracy actions against internet providers circulating illegal video-game content.
- Successfully representing a client in challenging the validity of a third party’s industrial design patent.
- Assisted a Japanese innovator pharmaceutical company with patent prosecution and enforcement strategy in relation to the early registration of generic medicines marketing authorisation.
Gowling WLG advises on the full gamut of intellectual property matters, from patents, designs, trade marks and brand enforcement to IP litigation, strategic portfolio management, anti-counterfeit measures, licensing, transactions and the commercialisation of IP rights. Managing partner David Aylen assists clients from the consumer goods, telecoms, pharmaceuticals and manufacturing sectors in trade mark, patent and copyright prosecution. Vladislav Ugryumov is a key figure in patent litigation, with extensive experience in the pharmaceutical and biotechnology sectors. Counsel Yulia Yarnykh is likewise recommended for trade mark enforcement and prosecution, data protection and regulatory matters in the advertising, media, e-commerce and life sciences sectors.
‘We have found Gowlings to be by far the strongest firm in Moscow for IP and advertising, and are very happy with the level of service we continue to receive. The team have a very pragmatic, real-world approach, finding the perfect balance between theoretical risk and practical exposure.’
‘Yulia Yarnykh embodies each of the above elements we appreciate in the Gowlings team, offering practical feedback, including any commercial and PR implications, as part of her risk assessment.’
Amsted Rail Company Inc.
Cisco Systems Inc.
- Continuing to support Amsted Rail, a US manufacturer of railway systems, in filing patent applications and in patent prosecution across Russia and the CIS region.
- Managing Mondelez International’s entire trade mark portfolio in Russia and Ukraine.
- Managing Louis Vuitton’s trade mark and design portfolios across Russia and the CIS region.
At KIAP (Korelskiy, Ischuk, Astafiev and Partners, Attorneys at Law), practice head Elena Buranova handles transactional and contentious IP, with a focus on the enforcement of trade mark rights. She also advises on the commercialisation of IP and regulatory issues arising in the areas of advertising, personal data and unfair competition. Associate Maxim Tabolo primarily focuses on non-contentious IP, with trade mark filing and portfolio management being key areas of activity.
‘The team is knowledgeable in various aspects of IP law and extremely responsive to inquiries. They provide excellent value for money and always give clear and practical advice. Another asset is their really strong team work.’
‘Practice head Elena Buranova demonstrates a solution-based approach, looks two steps ahead and delivers advice quickly.’
‘Maxim Tabolo is very caring and good at trade mark matters.’
‘Maxim Tabolo is a pleasure to work with – he is always ready for the most complex tasks and provides us with the best possible results every time. He makes sure that every step he takes on behalf of the client suits both the business strategy and the strategy of the legal case.’
Game Insight Holdings
- Advising Egmont in trade mark prosecution matters in Russia, including registration of trade marks and portfolio management.
- Assisting Game Insight Holdings with Russian trade mark portfolio management, prosecution and general IP advisory services.
- Acted for Gleener in an anti-counterfeit action to combat the import, distribution and sale of counterfeit trademarked goods that have been manufactured in China.
Noerr has an outstanding track record in IP litigation, underpinned by a stellar client list of leading brands across several sectors, including Volvo, Shell and Harry Winston. Viktor Gerbutov is 'very competent' and 'a safe pair of hands' in complex trade mark prosecution, internet domain name disputes and all other IP-related litigation. Vyacheslav Khayryuzov focuses on the transactional IP side, particularly technology, media and software licensing and personal data protection. Trade mark attorney Polina Galtsova advises on the management of IP portfolios and trade mark litigation.
‘Viktor Gerbutov is a safe pair of hands – very competent, reliable, effective, quick to respond, friendly and emphatic.’
‘Noerr are well known for precedent-setting IP disputes.’
Shell 6 No
Ravensburger Spieleverlag GmbH
- Representing Ravensburger Spieleverlag, a leading manufacturer of games and puzzles, in its various Russian copyright infringement actions against sellers and importers of counterfeit games.
- Representing Shell in the enforcement of the client’s colour trade marks against owners of several petrol station chains across various regions of Russia.
- Representing Harry Winston in Russia’s largest counterfeit trade mark infringement case.
Patent & Law Firm Yus specialises in the registration, protection and prosecution of IP rights across Russia and the CIS region, with particular expertise in trade mark and domain name infringement cases. The firm is also experienced in drafting exclusive rights disposal agreements, licensing and franchising agreements, and other transactional IP matters. Sergey Lovtsov, Maria Lovtsova, Pavel Yasnitsky and Denis Levchuk are the key contacts.
‘Besides its great technical skills, Yus is characterised by working towards and delivering exactly what a client expects, and often actually a bit more. The Yus team delivers outstanding quality, communicates very well, has great response times and is very easy to work with.’
‘Maria Lovtsova is always available for prompt and useful advice, often free of charge. In general, the firm has an unbeatable cost for value policy.’
Societe des Produits Nestle
Nutricia International B.V.
Airbus Operations GmbH
- Successfully represented Societe des Produits Nestle in a trade mark infringement dispute with a third party which has been using the client’s trade marked coffee jar lids when importing the jars into Russia.
- Acted for the Swisspearl Group in enforcing trade mark and domain name rights against a third party which was illegally using the website www.swisspearl.ru and the domain name swisspearl.ru.
- Represented Giorgio Armani in appealing the decision to refuse to register the client’s trade mark before the Chamber of Patent Disputes.
The team at Pepeliaev Group is led by Valentina Orlova, who specialises in patent, trade mark, copyright and software protection, handling both non-contentious matters and representing clients before Rospatent and other intellectual property offices. She is recommended for transactional IP, where she has extensive experience in the commercialisation of IP rights through licensing and franchising agreements in e-commerce and advertising.
A1 Operating Ltd
British American Tobacco
Brunswick Rail Group
- Advised Cezar, a new market entrant specialising in frozen food items, on the filing and registration of new product lines as both a trade mark and an industrial design.
- Assisted A1 Operating with the transfer of several trade marks to an affiliated company.
- Advised Rosatom in various matters related to patent registrations abroad.
ALRUD Law Firm offers a wide range of expertise in Russian IP law, from commercial support in the monetisation of IP rights to trade mark and design portfolio management, registration, prosecution and enforcement and the co-ordination of anti-counterfeiting strategies. Department head Maria Ostashenko focuses on transactional matters and the commercialisation of IP assets, especially in licensing and franchise agreements, marketing campaigns and advertising. She also handles trade mark prosecution and disputes involving digital content, where she is supported by Ilya Khodakov, an IP protection specialist who 'is always ready to find the best solution for the client'.
‘ALRUD Law Firm has strong expertise in the field of intellectual property issues, which allows them to provide solutions to the client that are both cost and effort effective.’
‘Ilya Khodakov has a very gentle yet firm approach to his clients and quickly understands each and every aspect of their request. He always delivers work of great quality and never misses deadlines.’
‘Ilya Khodakov is very responsive and attentive to detail. He is always ready to find the best and most proper solution for the client.’
- Represented French furniture manufacturer Interior’s in a trade mark infringement dispute brought by its former exclusive franchisee.
- Assisted Mjólkursamsalan, a famous Icelandic food and beverage company, with the registration of its ‘Skyr’ trade marks in Russia and Belarus.
- Represented a large manufacturer of mining equipment in a trade mark and domain dispute with a competitor, which alleged that it was an official distributor of the client.
Elena Gorodisskaya chairs the IP practice at Andrey Gorodissky & Partners and handles the registration of trade marks, industrial designs and copyright with Rospatent. She also has extensive courtroom experience representing Russian and foreign clients in IP disputes before the Chamber of Patent Disputes and the commercial courts. Associates Anna Velichko and Anatoly Sherstin frequently assist Gorodisskaya in complex patent and trade mark infringement disputes.
‘Anatoly Sherstin is a star IP, patent and design lawyer – he is extremely knowledgeable in his field, very responsive and always goes the extra mile, offering pragmatic and commercially savvy advice.’
- Assisted Micheli & Cie with the industrial design and patent filing and registration in Russia for an innovative endodontics product.
- Successully assisted a landmark theatre, Kinoteatr Khudozhestvennyy, with the registration of its trade mark in the Latin and Cyrillic alphabets, despite previous refusals by the Russian intellectual property office due to its lack of distinctiveness.
- Advising Da Vinci Partners on the management of its patent portfolio.
CMS has significant experience in patent revocation, trade mark infringement and IP disputes in Russia and across the CIS region. Other areas of expertise include data protection, trade mark registration and assistance with transactional matters such as licensing and franchising agreements. Trade mark and patent attorney Anton Bankovskiy is an experienced litigator and regularly acts for Russian and international clients in the telecoms, technology, energy and life sciences sectors in the Chamber of Patent Disputes and the Russian commercial courts.
‘CMS Russia has good lawyers across different practices and they all work as one efficient team. CMS is not only a provider of legal services but also a good business partner with excellent customer service. The team is good at finding solutions tailored to our business and handling complex IP issues under time pressure. We always get quick responses to our urgent requests.’
‘Anton Bankovskiy is flexible and always aims to find an individual approach to our needs. Anton and his team keep us informed and provide clear instructions on what the next steps are.’
Telsa Holding a.s.
Carrier Corporation (United Technologies Corporation)
Japan Tobacco International
- Advising Microsoft in copyright audit matters in various Russian regions.
- Represented Tesla Holdings in a trade mark non-use cancellation case in the Russian IP court.
- Representing Ecolab in trade mark prosecution matters in Russia.
Ermakova, Stoliarova & Partners, Patent Agency advises a wide range of brand owners in the telecoms, financial services, life sciences and pharmaceuticals, food and beverage, and consumer goods industries on the registration, protection and prosecution of patents and trade marks. Key figures include name partner Elena Ermakova and patent specialists Larisa Verbitskaya and Vladimir Naumov.
‘Elena Ermakova is one of the leading specialists in the IP sector with a world-class reputation in copyright and related rights, design rights, trade mark rights and patents.’
‘Larisa Verbitskaya is a great professional in litigation.’
Bell Equipment Russland
- Assisting Wine International Project, one of Moldova’s leading producers of wine and alcoholic beverages, in the registration of trade marks across several jurisdictions.
- Advised Bell Equipment Russland on taking anti-counterfeit measures against an importer and distributor in Russia.
- Represented LenPivDo in a dispute concerning the early termination of the protection of a trade mark.
With a strong focus on contentious IP, FBK Legal specialises in acting for clients from a range of industries in trade mark and patent infringement litigation. Alexander Ermolenko heads a multi-disciplinary team which is able to advise on the various IP aspects of commercial transactions, licensing, tax and regulatory compliance.
Marie Brizard Wine & Spirits (Belvedere)
- Advising Sesderma on the registration of trade marks for a large number of cosmetic products in Russia.
- Advising H2O Software on various IP issues.
- Advising Yamaha Motor CIS on the organisation and processing of personal data protection.
The team at Kosenkov & Suvorov Law Firm is led by Konstantin Suvorov, a seasoned IP litigator in the areas of trade mark, patent and copyright infringement. On the non-contentious side, he is also experienced in transactional IP and advises on the IP aspects of licensing and franchising agreements and those involving commercial transactions and advertising. The firm acts for clients from a range of sectors, namely electronics, telecoms, e-commerce, pharmaceuticals and biotech.
‘The team’s core strength is its unique expertise across the full range of IP matters. They have experts handling complex patent and trade mark litigation, as well as transactional IP work, with a focus on technology-related issues.’
‘Konstantin Suvorov has established, wide-ranging expertise, including in contentious matters, and profound knowledge in IP. He is our go-to counsel for all IP issues in Russia due to his pragmatic and business-oriented approach.’
‘Konstantin Suvorov is a highly skilled patent lawyer. He is responsive, adept at technical arguments and effective before the courts and Rospatent. Highly recommended.’
Shaltai Editions Art Gallery
Retail Rocket LLC
- Advising Shaltai Designs, a Russian modern art gallery, on a range of licensing and IP issues.
- Advising restaurant chain Bushe on its brand protection and trade mark registration.
- Represented a Russian music label in a copyright dispute with a Russian pop singer.
PATENTUS specialises in representing clients in trade mark infringement disputes involving parallel imports and counterfeiting. It also has experience acting on claims for early trade mark cancellation due to non-use in the Court for Intellectual Property Rights and the nullification of patents in the Chamber of Patent Disputes. Managing partner Dmitry Markanov and head of patents Alexey Mikhailov are the key figures.
‘Dmitry Markanov is a fantastic litigator and leads a well-rounded and cohesive team of IP specialists.’
Kia Motors Corporation
FSUE Russian Post
Black Star Burgers
- Advising Kia Motors Corporation on several actions combating parallel imports.
- Assisting FSUE Russian Post with the registration of its trade mark.
- Acted for Northern Star, a leading Russian pharmaceutical company, in challenging a foreign patent for erectile dysfunction treatment, Cialis, and successfully obtaining the right to sell an analogue drug in the Russian market.