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AUTOMOBILES Trademark Holder

Our client — one of the oldest and largest Russian car spare parts distributors — has almost lost its key trademark to a competitor by the time our firm was hired. As a result of sound and timely actions, our team members managed to protect the client’s trademark from hostile invalidation in the Chamber for Patent and Trademark Disputes.

Following the reinstatement of trademark rights, we have cancelled the adverse party’s trademark, based on the non-use argument. We also managed to reduce the claimed RUB 10m compensation to zero, based on the argument of bad faith in using the non-used trademark as a basis of the infringement lawsuit. This was a case-law-changing precedent.

Lead partner:

Dmitry Markanov

Managing Partner

Other team members:

Andrey Akimov

Lead Lawyer

Tanaki

We are representing a large international manufacturer of automotive spare parts from Japan. The client faced a number of infringement lawsuits regarding the use of a utility model in the most popular product of the client.

We have successfully challenged the supposedly-biased forensic experts nominated by the adverse parties, which resulted in the unbiased result of the examination.

Despite the aggressive effort of the counterparty to invalidate the favorable expert report, the lawsuits against our client have been refused in full.

Lead partner:

Dmitry Markanov

Managing Partner

Other team members:

Tatiana Sergunina

Lawyer

Displair & Bipron

We have fully drafted, prepared and filed the patent applications for two inventions that have been nominated and included in the list of 100 most promising (best) Russian inventions.

The first invention — Displair — refers to the technology of nonscreen displays, projecting image on the liquid, sprayed in the air.

The second invention — Bipron — dramatically improves the grounding of railways equipment, solving the acute problem in the field of rail transport, which is particularly important for passenger and flammable cargo railcars.

Lead partner:

Nikolay Pyzhev

Managing Partner

Other team members:

Alexey Mikhailov

Lead Counsel
RUPTO Attorney 1339
Eurasian Attorney 297
LLM IP, M. Sc. Eng.

Genetic Preparations

We fully compiled and submitted 6 applications for biotechnological inventions on behalf of NGO “Centre for Development of Nuclear Innovation Cluster in Dimitrovgrad of Ulyanovsk Region”, referring both to innovative medicine and to methods for DNA diagnostics of genetic diseases of the fetus, based on the pregnant woman’s blood samples: Ayvifarma, TestGen, Dzhinekst, Salvim.

This is a breakthrough invention eliminating the need of carrying out dangerous for the fetus diagnostics tests.

Lead partner:

Nikolay Pyzhev

Managing Partner

Other team members:

Alexey Mikhailov

Lead Counsel
RUPTO Attorney 1339
Eurasian Attorney 297
LLM IP, M. Sc. Eng.

Bacterial Technologies (Devouroil)

Our team acted on behalf of Russia's largest producer of biological products for oil refinement in the Chamber for Patent Disputes and the Court for Intellectual Rights. The opponents tried to cancel trademarks of our client in bad faith, which have already been in use for nearly 20 years.

Our team managed to maintain legal protection of the trademarks to the full extent in the Chamber for Patent Disputes and then in the Court for Intellectual Rights. This deal was of particular importance for our client as it allowed it to stay in business and hold accountable the offenders, producing counterfeit (one of the offenders has already been brought to criminal liability by court).

Lead partner:

Dmitry Markanov

Managing Partner

Other team members:

Tatiana Sergunina

Lawyer

Drugs Formulation

Our client, a spin-off from the most innovative Russian developer of innovative drugs — the Chemical Diversity Research Institute — the organization, standing at the origins of the Russian pharmacology, has been looking for new promising molecules, which were about to go out of patent protection, for the launch of generics under the federal program of import substitution.

The client is one of the 4 largest pharmaceutical distributors in Russia and is considered as the most influential one since its owner is the chairman of the Russian Union of the Industrialists and Entrepreneurs.

We have carried out a comprehensive and complete analysis of the patent situation for the 45 most interesting molecules and indicated existing capabilities and limitations. As a result of this work, the company could adjust its plans for the development and clinical trials, lined up a strategy and sequence of the generic drugs market launch.

Lead partner:

Dmitry Markanov

Managing Partner

Other team members:

Alexey Mikhailov

Lead Counsel
RUPTO Attorney 1339
Eurasian Attorney 297
LLM IP, M. Sc. Eng.

DEFENgroup Balt

Our client received a claim of CJSC Meritek about the alleged violation of patent No. 2384684 on the anti-theft locks for the hood from his dealer “Rolf October”. As a result of our analysis, we have prepared an opinion, clearly showing that there is no breach of the patent, which eventually concluded the matter.

Following the analysis of the patent portfolio of the company, the client decided to manufacture and patent a number of modified products, which are in some ways exceeding the product offered under the patent No. 2384684.

Lead partner:

Dmitry Markanov

Managing Partner

Other team members:

Alexey Mikhailov

Lead Counsel
RUPTO Attorney 1339
Eurasian Attorney 297
LLM IP, M. Sc. Eng.

Network Compensators of Reactive Power

The company, in close collaboration with the developer and on the basis of a license, has been producing some rare power equipment, which has no successful prototypes abroad, for more than 20 years. Throughout the period of their collaboration, the developer of the technology acquired a strong patent portfolio consisting of more than 60 patents in Russia and the CIS countries (the patent portfolio of all team members, who worked on this project, consists of more than 200 patents).

However, due to the fact that the company and the developer decided to cease their cooperation, it was necessary to find a way to complete the ongoing projects without violation of patent rights of the developer, and continue using best practices in this field without violating existing patents.

This task required the analysis of all existing patents in this area, solutions, which could be considered as common knowledge, and other promising solutions developed by the company, independently of the author. As a result, we managed to find a working solution that allowed for solving the problem without infringing anyone’s rights.

Lead partner:

Dmitry Markanov

Managing Partner

Other team members:

Alexey Mikhailov

Lead Counsel
RUPTO Attorney 1339
Eurasian Attorney 297
LLM IP, M. Sc. Eng.

Packaging Components

Our client faced claims of its main competitor — one of the largest manufacturers of packing units and its components — Tetra Laval Holdings. The claim was concerning the breach of a patent for the production technology of advanced aseptic packaging component.

We have carried out an analysis of the patent situation in the Russian Federation and the analysis of existing patent-friendly approach to solving technological issues, which allowed the client to modify the original technology in such a way, so that it would not violate the patents of Tetra Laval Holdings.

Lead partner:

Dmitry Markanov

Managing Partner

Other team members:

Alexey Mikhailov

Lead Counsel
RUPTO Attorney 1339
Eurasian Attorney 297
LLM IP, M. Sc. Eng.

Promcontract

Our client received a claim regarding the infringement of patent No. 124042 — household temperature control for under floor heating. We carried out a patent search and identified ways to change the product in such a way that it does not violate any of the existing patents. As a result, we have advised the client on the new product design, which allowed the client to avoid trial and stay in business.

Lead partner:

Dmitry Markanov

Managing Partner

Other team members:

Alexey Mikhailov

Lead Counsel
RUPTO Attorney 1339
Eurasian Attorney 297
LLM IP, M. Sc. Eng.

Polimet

The client is one of the two largest cable manufacturing plants in Russia, receiving millions-of-dollars income yearly from the patented product involved in the dispute, which is used by the largest state network provider Rostelecom.

Our team achieved a landmark decision in court where, for the first time in Russia, there was established that a seller of patented goods cannot enjoy the right of prior user. As a result, we managed to restore the full control over the main client’s product.

Lead partner:

Dmitry Markanov

Managing Partner

Other team members:

Tatiana Sergunina

Lawyer

Ararat Vinery (Aragats)

Our Client — one of the oldest brandy distilleries in Armenia — faced two lawsuits claiming compensation for alleged trademark infringement. At the initial stage of our involvement we managed to achieve a precedent-setting court decision, reducing the awarded compensation in comparison with the plaintiffs’ demands by 100 times.

Then we cancelled the adverse party’s trademark in part due to non-use and challenged the trademark in full in the Chamber for Patent and Trademark Disputes. The negative decision of the Chamber has been then appealed with the Court for Intellectual Rights who invalidated the trademark in full in favor of the client.

The project included 4 court cases and we have won all of them. As a result, our client received access to the Russian market.

Lead partner:

Dmitry Markanov

Managing Partner

Other team members:

Tatiana Sergunina

Lawyer

I.D.C. Holding & I.D.C. Lolly (Ego)

We have performed a complex enforcement of IP rights of famous Slovak manufacturer of EGO cereal bars against bad faith action of a distributor. Thanks to the sound actions of our team we ensured that all major retailers have ceased the sale of distributor’s unlawful goods already at a pre-judicial stage.

At the initial stage of the project our specialists filed a claim with the RUPTO, dismissing the distributor’s trademark application, which resulted in the refusal of protection of counterfeit product.

Then, we have simultaneously initiated police actions, unfair competition action, and infringement litigation, resulting in ˆ500,000 settlement for the benefit of our client.

Lead partner:

Dmitry Markanov

Managing Partner

Other team members:

Tatiana Sergunina

Lawyer

Kholod Slavmo

We are representing the manufacturer of one of the most popular ice cream brands on the Saint-Petersburg market in legal proceedings regarding trademark ownership rights, which are disputed by another large ice cream manufacturer. Before hiring us, the client has already spent about 10 years in legal proceedings, during which it had been represented by Baker & McKenzie, Pepeliaev Group and other advisers.

Our team managed to finally bring the project to its final victory which resulted in ceasing the infringement and allowed for getting back the client’s control of the market situation in full. The result: securing the rights for the valuable trademark, and the complete cease of the infringement.]

Lead partner:

Dmitry Markanov

Managing Partner

Other team members:

Tatiana Sergunina

Lawyer

Strova Media (KUBANA)

We are representing the producer general of famous KUBANA rock festival in a legal action against the manufacturers and sellers of counterfeit juices and tin food. The list of infringers includes Tetra Pak and Bonduelle (manufacturers of cartons, tins and cans) Lenta and Magnit (large retail networks), Rosneft and Kuban Oil & Gas Company (large gas-station networks). The project has been ongoing for a few years now and comprises 23 separate court proceedings in various regions of Russia. As of now there are 3 remaining ongoing cases, other 20 cases, as well as a few pre-trial amicable settlements, have been successfully finished in favor of our client. We managed to successfully invalidate falsely registered trademarks, which belonged to the unauthorized manufacturer, and defended the client’s trademarks against bad-faith early cancellation attempt.

Lead partner:

Dmitry Markanov

Managing Partner

Thank You!