Russia
Intellectual Property
Intellectual property is precious. In the emerging markets of
the Russian Federation and the CIS it can also be vulnerable.
Baker & McKenzie CIS Intellectual Property Practice Group employs over 30 lawyers (including full-time registered trademark and patent attorneys and consultants) in its Almaty, Baku, Kyiv, Moscow, Tashkent and St. Petersburg offices, advising on all aspects of intellectual property management including trademarks, copyrights, patents, technology transfer issues and enforcement, due diligence and contractual matters, throughout the CIS and worldwide.
We are proud to be regularly recognized as practice leaders in this region. Chambers Europe 2010 admits that our team is “a clear leader in the IP market”. Such a reputation has been earned through our work on behalf of clients in the biotechnology, chemical, pharmaceutical, food and beverage, apparel, luxury goods, entertainment, finance, engineering, courier and IT/telecoms industries.
Our CIS IP Practice has extensive experience on the full range of IP services:
• trademark and patent prosecution and advice; • copyright, including software, advice;
• patent, trademark and copyright litigation; • due diligence and contractual advice; • anti-counterfeiting activities; and • domain name advice and litigation.
Some of our major litigation cases include:
• We successfully represented Richemont International S.A. in a major litigation related to cancelation of registration of trademarks VACHERON CONSTANTIN and JAEGER-LeCOULTRE in Russia in respect of clothing.
• We successfully represented Home Box Office, Inc. (HBO) in a dispute against registration of the trademark Sex and the City in the name of Parlan Group.
• We successfully represented Paroc Oy Ab, a European leader in the manufacturing of mineral wool insulation products, in an unfair competition action vs. a Russian factory, Zavod Techno.
• We won a patent infringement battle on behalf of Novartis AG against the national generic maker Pharm-Sintez in connection with Novartis’s blockbuster anti-cancer medicine Glivec.
• We successfully represented Reed Messe Wien GmbH in a court action against a Russian company in which it sought termination of illegal use of its trademarks in domain names. The claims of the client were granted in full, and the court prohibited use of designations confusingly similar to the client’s trademarks in domain names and awarded monetary compensation for infringement. The domain names were successfully transferred to the client. The court examined automatic readdressing of domain names to the website of the defendant and offered a broad interpretation on the similarity of domain names with the trademarks.
Law Firm of the Year in
Europe
Chambers Europe 2012
Firm of the year (Russia) -
2006, 2007, 2008, 2009, 2010,
2012
Managing Intellectual
Property
Award for Excellence –
Law Firm of the Year in
Central and Eastern Europe
Chambers Europe 2011
Law firm of the Year in
Russia
• We successfully advised and represented Diageo, the world’s leading premium drinks producer, in a large-scale litigation campaign aimed at safeguarding its rights to use the Smirnov and Smirnoff trademarks in Russia.
• Acting for the largest global chip manufacturer Intel Corporation, we successfully contested (in two court levels) a Rospatent decision that maintained protection of the COMINTEL service mark registered in the name of a local namesake company for telecom services. As a result, the courts found that the mark COMINTEL is confusingly similar to the well-known INTEL trademark and annulled Rospatent’s decision.
• We successfully represented Coordination Centre for TLD .RU in connection with the litigation related to uncertainties over the priority period for registration of domain names in the newly formed .RF top level Cyrillic domain. Uncertainties related to protection in Russia of international trademarks were used in an attempt to extend rights from generic domain names into the newly created .RF Cyrillic domain.
• Representing Shangri-La International Hotel Management Ltd. in trademark litigation with JV “Karo”, a Russian casino and cinema chain owner. Shangri-La International Hotel Management Ltd. has been planning its expansion into the hotel services market in Russia for several years. However its brand name SHANGRI LA was already registered in the name of Russian company JV “Karo” for services crucial for our client – hotel and restaurant services. The Chamber for Patent Disputes terminated the opponent’s multiple registrations for these services. The opponent appealed each and every decision in the Moscow City Arbitrazh (Commercial) Court, but the court upheld them. The Ninth Appellate Court also handed a victory to our client. The termination of the JV “Karo” registrations has cleared the way for the expansion of Shangri-La International Hotel Management Ltd. into the Russian hotel market.
• Representing Starbucks Corp. (Starbucks Coffee Company) in a long legal battle in various litigation forums in Russia against a trademark squatter who demanded excessive compensation for dropping a registered trademark closely reproducing the famous logo of the company. The victory has greatly facilitated the expansion of Starbucks Corp. into the Russian market.
• Grande Group - in this well-publicized case after years of litigation we obtained a favorable ruling of the Supreme Arbitrazh Court of the Russian Federation that a Hong-Kong based company called AUIL had acted in bad faith when registering in its name the AKAI trademark belonging to the Grande Group from Singapore, requiring the Russian Patent and Trademark Office to cancel the offending trademark registration.
• Acting on behalf of Gallup Corporation, successfully overruled in the Federal Arbitrazh Court four lower court judgments over a decision of the Supreme Patent Chamber of the Russian PTO. In addition the Practice Group has been assisting Gallup in complex litigation over trademark rights in Russia and Kazakhstan. We managed to
Awards and Rankings
Ranked in tier 1 for trade mark prosecution work by
MIP Trade Mark Survey 2011
Ranked in tier 1 for trade mark/copyright contentious work by
MIP Trade Mark Survey 2011 Ranked as No1 in Patent Contentious category by
MIP Patent Survey Europe 2011, 2012
Ranked in band 1 by
World Trademark Survey 2011, 2012
Ranked in tier 1 by
Intellectual Asset Management 2011
Firm ranked in band 1 in Intellectual Property by Chambers Europe 2011, 2012 Chambers Global 2011, 2012
Rated leading practice by PLC Which lawyer? 2009-2011
Ranked in tier 1 in Intellectual Property by Legal 500 EMEA 2010-2012
cancel offending trademarks and, in advance of the win in court, in administrative proceedings we achieved the status of being well-known in Russia for the GALLUP INSTITUTE mark.
• We represented Best Western International, Inc. before the Chamber for Patent Disputes and in court proceedings. We managed to obtain reversal of the Chamber for Patent Disputes decision to maintain the registration of the trademark BEST EASTERN, proving that it is confusingly similar to the trademarks owned by our client.
• Representing Biofarma, a major European pharmaceutical company, in a dispute involving unauthorized use of a drug name confusingly similar to the trademark of a well-known medication by one of the major Russian generic drug companies. Successful cancellation of the adverse party’s trademark at the Chamber for Patent Disputes of the Russian PTO was followed by a landmark judgment in a trademark infringement case awarding the highest possible amount of statutory trademark infringement compensation as well as destruction of infringing medications and packaging containing confusingly similar marks. This was only the second time a Russian court had awarded the
maximum amount of statutory compensation; the first case was also
handled by B&M Moscow on behalf of Nike.
• We succeeded in defending the rights of the Japanese auto
components manufacturer Denso Corporation in a legal battle
regarding the denso.com domain name against a Russian limited liability company Denso, which claimed the name as its own. The case was the very first to be tried by the Russian commercial courts in connection with a dispute over a domain name in the .com zone where the Uniform Domain-Name Dispute-Resolution Policy applies.
• Eli Lilly & Co Ltd. - we successfully represented the client in patent disputes in Ukraine and in the Republic of Belarus. The latter dispute, tried in the Supreme Court of the Republic of Belarus, was initiated by our client’s competitor who filed lawsuits for granting of a non-exclusive compulsory license. We succeeded in safeguarding the innovator’s exclusive right to its branded medicine proving the absence of grounds for satisfaction of the claims and the lawsuits were dismissed.
• We were responsible for co-ordination of litigation on behalf of a major Russian oil company in a trademark dispute in Europe arising out of a CTM registration.
• We successfully represented a leading US brewing company before several administrative boards of appeal throughout the CIS with regard to cancellation of appellation of origin registrations.
Examples of our non-contentious IP-related work include:
• We successfully represented Richemont International SA in connection with obtaining recognition of CARTIER as a well-known trademark in Russia. Only 100 trademarks in Russia have achieved the sought-after status this far. The status allows trademark owners to extend protection to dissimilar goods and services, among other things.
Team Rankings
“Baker & McKenzie – CIS, Limited fields “a great team that provides an excellent service at a reasonable cost that complies with not only legislation but common sense”. Eugene Arievich is “truly the best lawyer and team leader”. Margarita Divina and Denis Khabarov are also recommended. Sergey Yakovlev is a trade mark consultant.”
Legal 500 EMEA 2011
Eugene Arievich is ranked as Star Individual in Intellectual Property by Chambers Europe and
Chambers Global 2011, 2012
“Mr. Arievich has an undisputed reputation and is trusted as one of the IP pioneers in Russia.“
Chambers Europe 2011
“Eugene Arievich is a long-established practitioner, widely hailed as “an absolutely excellent IP lawyer.”
Chambers Global 2011
Eugene Arievich is endorsed in Intellectual Property by
PLC Which lawyer? 2010-2011
“Sources acknowledge that Baker & McKenzie’s IP practice is a major force in the trademark field. The team advises across the spectrum of contentious and non-contentious work, and is noted in particular for its excellence in enforcement and litigation.”
Eugene Arievich is ranked in band 1 Individual and Denis Khabarov and
Margarita Divina are ranked in band 2 Individuals for both contentious and non-contentious work by
World Trademark Survey 2011
Margarita Divina is recommended in Intellectual Property by
Chambers Europe 2011 and Chambers Global 2011
“Clients respect Ms. Divina for her technical knowledge and propensity for handling complex cases.”
• Successfully acting for Yandex, a major Russian search engine, before the Chamber for Patent Disputes, succeeding in having the YANDEX trademark recognized as well-known in Russia. Yandex has become the first Internet-related business in Russia to obtain fame status for its core trademark.
• We handle trademark portfolios in Russia and CIS for major international companies.
• After winning the management of Unilever’s global trademark portfolio, we continue to successfully provide IP portfolio management services, resulting in considerable savings for our client.
Some of our major anti-counterfeiting projects include:
• We have been acting for VF Corporation in structuring a massive-scale trademark enforcement campaign in Russia. It includes registration of trademarks with the customs authorities and day-to-day interaction with various customs and police enforcement bodies all across Russia, initiating and representing the client in a variety of administrative and criminal matters.
• Structuring massive Russia-wide trademark enforcement campaigns for
Columbia Sportswear Company. Initiating and representing clients in a large number of police raids, civil, administrative and criminal matters. Registration of the clients’ IP objects with the customs authorities and handling customs enforcement matters. In the course of one of these enforcement campaigns we managed to shut down a factory in Moscow region that used to be a major supplier of counterfeit goods in the region, producing up to 10,000 pieces of counterfeit apparel per month and successfully finalized criminal litigation against its management.
• Representing Sony Corporation in numerous administrative proceedings on anti-counterfeiting activities in Russia.
• Representing Nike Corporation in a landmark ruling in the Moscow
Arbitrazh (Commercial) Court against the infringement of trademark rights. Action was taken against a company selling counterfeit goods carrying registered trademarks owned by Nike. We applied for and won for Nike the upper limit of compensation available, 5 million roubles, the largest amount of compensation of losses ever awarded by a Russian arbitrazh court as a result of trademark infringement. We also obtained recognition of the
trademarks NIKE and Swoosh Design as well-known in the Russian
Federation through proceedings before the Chamber for Patent Disputes
• Representing a world leader in communication industries in multiple administrative proceedings with regard to infringement of its trademark rights.
• Successful representation of a US perfume manufacturer in a criminal action (including a police raid) against a Moscow region perfume plant engaged in manufacturing counterfeit perfumes.
• We were responsible for structuring a massive enforcement campaign
for a multinational computer hardware and supplies company, including
initiating and representing the client in a number of police raids, criminal and administrative matters.
• Registration with the customs authorities of various trademarks of several multi-national companies and maintaining large-scale customs enforcement campaigns.
Some of our major IP transactional projects include:
• Assisting a major player in the international hotel market in closing the transaction for their first franchised hotel in Russia. The work involved advising the client on various issues associated with launching and
operating franchised hotels in different parts of Russia; drafting and negotiating franchise and license agreements; advising the client on real
estate and intellectual property issues associated with operating hotels
in Russia; performing due diligence investigations in connection with
proposed franchisees; registration of franchise and license agreements with
governmental authorities. Now the client has around 10 arrangements for franchised hotels in Russia, and more are coming.
• Advising a major international chain of fast food restaurants in developing and maintaining their chain of franchised fast food restaurants. We are advising the client on launching a chain of fast food restaurants throughout
Russia; drafting and negotiating franchise agreements; drafting documents
necessary for maintaining concluded agreements (amendments, variations,
terminations, etc.); state registration of franchise agreements and other
documents with governmental authorities. To date, the total number of franchisee agreements exceeds 70, with 15 of them concluded in 2010.
• Advising Sun Microsystems, Inc. on intellectual property in connection with copyrights and licensing matters in view of the development of particular software products.
• Advising and drafting agreements for a high-tech company on the protection and transfer of intellectual property in Russia and in the US, including trademarks, software, patents, domain names and web sites.
• Advising a major European bank on technology transfer issues in connection
with an investment project.
• Structuring a Ukrainian franchise relationship for a major international fashion designer/manufacturer.
• Advising a major US software company on legal regulations governing the importation and use of encryption software in Ukraine.
• Successfully representing clients in IP transactional matters, handling
multiple licensing and franchising projects in the hotel, cosmetics, and catering industries.
• We represented the British coffee shop chain Costa Limited in opening its
first outlet in Moscow; working on franchise issues. It is notable that the
launch of the Costa Coffee chain in Russia follows so shortly after another recognized chain, U.S. Starbucks, opened its second coffee shop in Moscow after victory in long-lasting litigation that was also handled by Baker & McKenzie Moscow lawyers.
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Contacts Moscow
Eugene Arievich Margarita Divina Denis Khabarov
Sadovaya Plaza, 12th Floor 7 Dolgorukovskaya Street Moscow 127006 Russia Telephone: +7 495 787 2700 Facsimile: +7 495 787 2701 [email protected] [email protected] [email protected] www.bakermckenzie.com
