Intellectual Property

Legal 500, 2016 listed AGP IP among best IP practices in Russia.

Chambers Europe, 2013 ranked AGP second in the category Intellectual Property.

Andrey Gorodissky & Partners has seen its achievements in intellectual property recognized in Pravo.ru-300’s ranking of law firms.

Best Lawyers has repeatedly listed our lawyers among best IP professionals.

We are proud that AGP is among leaders in the IP legal market in Russia. For twenty years, this practice at AGP has been headed by Dr. Elena Gorodisskaya, AGP partner, who is attorney-at-law and one of Russia’s most distinguished trademark attorneys. In 2016 the Managing Intellectual Property magazine listed Elena among highly recommended IP lawyers. Since recently, the patent practice at AGP has been supervised by Nikolay Popelensky, one of the first independent IP practitioners in Russia.

We provide the following services:

  • Representing clients before commercial (arbitrazh) courts, IP Court and courts of general jurisdiction in all categories of disputes relating to protection of trademark and other intellectual property rights, including:
    • appealing against decisions of the Russian PTO (Rospatent)
    • patent disputes
    • cancellation of trademark registrations
    • disputes relating to execution, performance or termination of IP license, assignment or pledge agreements
  • Representing clients in unfair competition disputes, in particular before the Federal Antimonopoly Service of Russia (its local offices), Rospatent and IP Court
  • Representing clients before the Federal Customs Service during administrative investigations of shipments of counterfeit products
  • Comprehensive legal support of transactions (including M&A) involving trademark or other IP rights, including:
    • negotiating transaction terms
    • transaction structuring
    • drafting agreements, and
    • recordal of assignment/pledge or licensing of IP rights at Rospatent
  • Comprehensive legal support for registration of rights to trademarks, inventions, utility models, industrial designs or other IP rights in Russia:
    • patent search, patent clearance or trademark search
    • drafting trademark applications or applications for inventions, utility models, industrial designs, computer programs or data bases
    • client support from filing an application up to obtaining a trademark certificate or patent
    • representing clients when appealing against examiner’s opinions at Rospatent or against Rospatent’s decisions in court
    • renewals and maintaining of IP rights (payment of annuities)
    • making changes to a trademark certificate or patent
  • Comprehensive legal support for obtaining international trademark registrations through the World Intellectual Property Organization and national trademark registrations in jurisdictions other than Russia
  • Comprehensive legal support for registration of inventions and utility models in countries other than Russia, including by filing international PCT applications, and support for registration of industrial designs; comprehensive legal support for obtaining Eurasian patents
  • Recordal of trademarks in the Intellectual Property Register of the Federal Customs Service
  • Representing clients in anti-counterfeiting actions, including administrative and criminal proceedings
  • Advice on all matters relating to protection or infringement of trademark or other IP rights
  • Advice on antimonopoly issues arising from trademark registration or use in violation of antimonopoly legislation
  • Preparing expert opinions
  • Due diligence on trademark or other IP rights, risk identification, preparing DD reports and risk minimization advice for the purpose of making business decisions on obtaining trademark or other IP rights
  • Advice on tax issues stemming from acquisition, disposal or use of trademark or other IP rights

Projects

General Electric

Successful defense of General Electric and its Russian distributor of electrical equipment. A notorious Russian patent troll holding a number of dubious patents brought a patent infringement action against GE’s distributor and claimed a compensation for each instance of sale of the products which allegedly infringed his patent rights. Thanks to AGP defense team, the claimant’s patent was declared invalid and his claim was dismissed.

Major alcohol beverage producer

Comprehensive due diligence on more than 400 intellectual property assets to be pledged and drafting IP rights pledge agreements.

Pharmaceutical project investor

Development of trademark/IP rights license and sublicense agreements unparalleled in licensing practices in the Russian pharmaceutical sector. The agreements have enabled the owner of the exclusive IP rights and trademark used to manufacture a medicine and the investor (AGP client) to delineate their regions of interest and allow them both to manufacture and sell the medicine using different dosage forms.

Metropol Joint Venture LLC

Successful representation of the client before the Chamber for Patent Disputes in disputes over illegal acquisition of the Metropol trademarks by third parties. The Chamber invalidated the third party trademark registrations.

Forsythe LLC

Successful defense of the client’s ownership rights to a database for monitoring and analysis of government and private pharmaceutical tenders in Russia.

SKYY Spirits LLC

Representation before commercial (arbitrazh) courts (trial, appellate and cassation levels) in proceedings to invalidate the Russian PTO’s decision cancelling the client’s trademark registration due to non-use (the client won the case).

Lavazza S.p.A. (Italian coffee and coffeemaker producer)

Defending the client’s trademark rights in non-use cancellation actions against it (one of the client’s trademark registrations was reinstated in court, while its other trademark registrations were upheld by Rospatent’s ruling).

Reno Schuhcentrum GmbH (German footwear and clothing manufacturer)

Challenging Rospatent’s refusal of registration of the client’s trademark in Russia despite the available letter of consent issued by the prior registration’s owner (Rospatent’s ruling was declared invalid and the mark was registered in the Russian Federation).

Upgrade magazine publisher

Administrative and judicial defense of the client’s trademark rights in connection with a third party’s opposition against registration of the client’s trademark reproducing a media name (the trademark registration was declared legal and valid).

Davide Campari-Milano S.p.A. (Italian alcohol beverage producer)

Representing the client as a third party in the administrative prosecution of a counterfeit goods importer initiated by customs agencies at a commercial (arbitrazh) court (the court ruled to hold the importer administratively liable, and the goods were declared to be subject to destruction).

Davide Campari-Milano S.p.A. (Italian alcohol beverage producer)

Representing the client as injured party before investigative authorities and as plaintiff in the criminal prosecution of counterfeiting (compensation for damage was recovered).

Davide Campari-Milano S.p.A. (Italian alcohol beverage producer)

Representing the client before the Federal Customs Service to record its trademarks in the Customs Register of Intellectual Property.

Major pharmaceutical manufacturer

Due diligence on intellectual property assets in a business acquisition project, and providing legal support for transactions to acquire trademark rights.

Major Russian alcohol beverage producer

Representing the client in connection with trademark licensing and creation of a distribution network as well as acquisition and implementation of know-how, and developing a legal strategy and drafting contracts.

RUSNANO

Due diligence on intellectual property, risk identification, preparing legal opinions and risk management recommendations for the purposes of making business decisions in more than 20 RUSNANO investment projects, including transactions with a total investment volume of more than 6 billion rubles.

NVision Group CJSC

Due diligence on more than 250 intellectual property assets of 34 companies of OJSC RTI Group (a major player in the sector and integrator of high technology research and production companies of Sistema JSFC) in connection with the strategic integration of NVision Group and OJSC RTI Group (Sistema JSFC) assets.

Lexmark Europe Sarl

Successful contesting the unlawful registration of the client’s trademark in the name of its agent.

Major tobacco producer

Representing the client as an injured party during the investigation and criminal proceedings against a counterfeiter, including representation during measures to seize and confiscate the equipment used for manufacture of counterfeit products.

Russian coffee drink producer

Judicial defense of the client in a lawsuit brought by global coffee producer Nestle over the alleged use of its trademark.

The International Council of Museums (ICOM)

Successful challenging Rospatent’s refusal of registration of the client’s trademark (the trademark registration was granted).

Major manufacturer and distributor of optical products

Comprehensive legal support in all matters relating to acquisition or disposal of trademark rights, and protection of the client’s trademark rights before customs authorities and commercial (arbitrazh) courts (trademark infringers were held liable for administrative and civil-law violations and had to pay a substantial compensation).

Tekhsnabexport OJSC (Tenex)

Legal support for obtaining international trademark registrations through WIPO and national trademark registrations in jurisdictions outside Russia.