NEWS & EVENTS

We are glad to share our recent practice, publications, highlight important events and developments in Russian and international IP landscape for you.  
 
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Published: September 2, 2018

Dr. Aleksey Zalesov, Managing partner, participated as a speaker at the 9th China Annual Patent Conference (CPAC)

Dr. Aleksey Zalesov, Managing partner, participated as a speaker at the 9th China Annual Patent Conference (CPAC) which took place on August, 30-31 in Beijing, China. Dr. Aleksey Zalesov made a presentation on a topic: «Russian national patent or Eurasian patent procedure: pros and cons» on the session dedicated to effective foreign patenting organized under the auspices of the AIPPI.

Published: June 17, 2018

A.Zalesov&Partners team attended ECTA 37th Annual Conference in Athens

Maria Makhlina and Irina Ozolina attended ECTA 37th Annual Conference on June 13 - 15th to know more about current trends and changes in the European IP Law, meet old and new friends and colleagues and share knowledge and views regarding current IP laws and practice in Russia and Eurasian region. Fascinating networking and educational experience in the cradle of our civilization.


Published: May 29, 2018

A.Zalesov&Partners contributes to the new IP edition Global IP Matrix regarding patent litigation tips in Russia

The contribution highlights main issues that should be kept in mind while being involved in patent litigation in Russia. The article points out pros and cons of starting a multinational dispute in this jurisdiction, and brings forward some strategical thoughts to be considered before filing an action. The article discusses deadlines and contest of a warning letter, preliminary injunctions, in-court examination, and damages. The full version of edition can be found at www.gipmatrix.com.


Published: May 22, 2018

The Court ruled in favour of A.Zalesov&Partners' Client, although the counterpart pleaded for not being properly served

The Ninth Arbitration Court of Appeal upheld the first instance court's decision rendered in favor of A.Zalesov&Partners' Client, although the defendant pleaded for his improper notification by the first instance. Previously our lawyers represented interests of the claimant Arthrex Inc. in a trademark infringement action. Moscow City Arbitration Court ruled in favor of our Client and forced the defendant to stop use trademarks «arthrex» of our Client in a domain name arthrex.ru and to pay monetary compensation. The defendant filed an appeal against the decision of the Moscow City Arbitration Court asking to reinstate the term for filing the appeal. The defendant claimed that he was not served properly since he received neither a copy of claim nor court's rulings. In the hearings regarding the issue, whether to accept or to reject the motion to reinstate the term for an appeal, our lawyers managed to prove that the defendant misbehaved, since he was duly notified about the court case under applicable laws and court practice. The court case number is F40-224389/17, the claimant was represented by the lawyer of A.Zalesov&Partners Vlad Ryabov.


Published: May 11, 2018

The Court ruled in favour of A.Zalesov&Partners' Client in spite of the in-court examination results

A Client of A.Zalesov&Partners, a local manufacturer of municipal machinery, was sued by a local patent owner seeking for injunction, destroying of vehicles in dispute, and demanding monetary compensation for patent infringement in amount equal to full price of the vehicles sold out. The suit was based on the doctrine of equivalents, since both parties agreed that there was no direct patent infringement. A nominated by court expert found equivalency; thus, declared that the patent was infringed. A.Zalesov&Partners provided a bulk of evidence to prove that the expert's conclusions were erroneous and contradicting to the facts of the case. A cross-examination of the expert revealed discrepancies in the expert's position. At the same time, A.Zalesov&Partners declared that claims limitation period expired, and besides, the patent owner abused his patent rights by filing these claims. After more than one year consideration in the first instance, the Moscow City Arbitration Court ruled to reject the patent owner's claims in full.


Published: April 24, 2018

A court of appeal put an injunction against a food supplement infringing a trademark of a Client of A.Zalesov&Partners

A client of A.Zalesov&Partners filed a lawsuit with the Moscow Region Arbitration Court requesting that the defendant is forced to stop selling the food supplement «ЦИМИЦИКЛИМ» (TSIMITSIKLIM) as infringing the trademark «ЦИ-КЛИМ» (TSI-KLIM) (RU510846) and to publish the court's decision. Doubts in confusing similarity were raised by the fact, that both names are the derivatives from the word «Cycle» (TSIKL) in the Russian language; meanwhile, the original and infringing food supplements are providing modulating activity over women in the menopause.

The Court of First Instance and the Court of Appeal agreed with arguments raised by Plaintiff's representatives. In particular, both courts upheld the Plaintiff's arguments that the designation under dispute was confusingly similar to the aforementioned trademark. The court confirmed that the designations compared are similar to each other phonetically and graphically. The courts also pointed out that food supplement «ЦИМИЦИКЛИМ» (TSIMITSIKLIM) and «ЦИ-КЛИМ» (TSI-KLIM) (RU510846) provides similar biological activity and relate to the same price bracket so that consumers would likely associate the designations with each other despite the fact that their names differ semantically.

The court agreed with the Plaintiff's representatives that expert opinion provided by the Defendant does not prove the absence of the designations' similarity. The courts upheld the Plaintiff's argument that said expert opinion was based on non-applicable rules, and and that the opinion ignored the phonetic and graphic similarity of the designations compared. The client was represented before the court by Aleksey Zalesov, the managing partner, and Vlad Ryabov, a senior lawyer of A.Zalesov&Partners.


Published: April 24, 2018

IP Days in Russia: A-Z IP Contributes

Managing Partner Aleksey Zalesov presented the panel topic: "Enforcement of patents in Pharmaceuticals in Russia: Problems and Prospects" at a conference organised by the Russian Academy of Science's Institute of State and Law as a part of their «Intellectual Property XXI Century» International Forum.


Published: April 4, 2018

The Court ruled in favour of A.Zalesov&Partners' Client to stop trademark infringement and imitation of «Raffaello»

The Tverskaya Region Arbitration Court ruled to prohibit the manufacturing, selling, and marketing of «Mona Liza» pralines, which had been infringing trademarks protecting "Raffaello" packaging and thus causing confusion on the market. The Court also ruled to seizure and destroy the infringing goods at the defendant's expense. The decision followed a suit filed in the name of Soremartec S.A., a company that is part of the Ferrero Group. Irina Ozolina, a senior partner at A.Zalesov&Partners, and Vlad Ryabov, a senior lawyer, represented Soremartec S.A. in the case, court file number is А66-20963/2017.


Published: March 8, 2018

A.Zalesov&Partners retains MIP Patent rating in 2018

A.Zalesov&Partners confirmed its strong position in patent contentious work in Russia for 2018 due to Managing IP study «IP Stars Firm Survey 2018. Patent» published on March 4th. Managing IP ratings are based on scrupulous study of recent cases held by patent firms, interviews with peers and clients, and is considered one of the highly regarded and reliable source of information about professionals in intellectual property field. For more information please follow the link.


Published: March 6, 2018

Patent for method for improving the survivability of cast parts for freight wagon trucks is announced invalid by the Chamber for Patent Disputes on an action filed by A.Zalesov&Partners

A.Zalesov&Partners filed an invalidation action against patent RU 2412073 basing on three grounds: lack of industrial applicability, lack of novelty and lack on inventive step. Although the grounds may seem to be controversial, this controversy was caused by highly unclear terms in patent claims. Therefore depending on claims construction, A.Zalesov&Partners claimed that the patent should either lack industrial applicability, or novelty, or inventive step. During the hearings on March 6th the Chamber for Patent Disputes announced the patent fully invalid due to the lack of industrial applicability.


Published: March 2, 2018

Irina Ozolina contributes to WTR Daily regarding parallel importation court practice changes in Russia

The contribution highlighted issues raised by the Constitutional Court of the Russian Federation in its Ruling as of February 13th, 2018 No 8-P. In this Ruling, the Constitutional Court set up new limitations on the scope of claims that trademark owners can make against parallel importers. The Constitutional Court checked whether clause 4 article 1252 (the right to destroy infringing goods), article 1487 (the principle of national exhaustion of trademark rights) and clauses 1, 2 and 4 of article 1515 (the right of a trademark owner to demand to destroy trademark infringing goods and require compensation) of the Civil Code comply with the Constitution. Whether these legal rules should be equally applied to initially counterfeit goods and to parallel goods was also subject to the Constitutional Court's consideration. In practice, the new ruling enlarges trademark owners' burden of proof in parallel importation cases: they now must prove good faith in challenging parallel importation and prove that they suffered real damages from parallel importation. To seek for destroying goods, trademark owners must now prove that parallel goods do not comply with internal market requirements or safety requirements, thereby endangering public health and safety.


Published: February 27, 2018

The Court ruled to demand 2 000 000 RUR of compensation for trademark infringement and imitation of Raffaello

The Moscow City Arbitration Court ruled to prohibit manufacturing, selling and marketing of «Delice» pralines infringing trademarks protecting «Raffaello» packagings and causing confusion on the market. The decision was takes as a result of consideration of the suit filed in the name of Soremartec S.A, a company of Ferrero Group. The Court also ordered that manufacturer paid compensation for infringement in amount of RUR 2 000 000 to the trademark owner. Irina Ozolina, senior partner to A.Zalesov&Partners, represented Soremartec S.A. in the case, court file number is А40-217842/17.


Published: February 23, 2018

Senior Partner of A.Zalesov&Partners Irina Ozolina attended the VI International Networking Congress for Lawyers in New York handled by the European Organisation for Cooperation of Lawyers (CECJ).

During the Congress participants from Italy, Russia, Ukraine and USA discussed current trends in international cooperation among lawyers, exchanged their views on practice development in their respective countries. Guests also visited the New York Supreme Court, where they could know more regarding court system in USA, federal and state criminal law, attended the hearings on pre-trial measures and heard an inspiring closing speech of Attorney General in the hearings on the merits on a criminal case. Also interesting was a guided tour to the United Nations Organisation. Additionally a seminar on US commercial law was of great value for participants, since it gave them better understanding on significant differences in state laws, which parties of transnational agreements on technologies exchange tend to choose.


Published: February 14, 2018

Patent relating to a weighing device has been announced invalid by the Chamber for Patent Disputes on an action filed by A.Zalesov&Partners

The Chamber for Patent Disputes has satisfied the opposition filed by A.Zalesov&Partners on behalf of a Japanese company relating to a weighing device. The patent as granted has been deemed invalid and a new set of restricted claims has been filed by the patent holder. Said new set of claims was sent to an additional search and examination. Final decision is to follow.


Published: February 12, 2018

IP Court reinstated an invalidated trademark because the parties settlement the dispute amicably

On February 7th 2018, the Intellectual Property Court agreed to cancel Rospatent decision due to settlement agreement of the parties, although confirmed that decision itself is not illegal. The Decision if Rospatent in question satisfied an invalidation action filed by Golden Lady Company, Italian manufacturer of tights, widely known on the Russian market. Rospatent cancelled ATTIVA trademark, registered for tights and underwear in the name of a company, that has nothing to do with Golden Lady Group, because Rospatent agreed that such registration would cause confusion among consumers who know ATTIVA tights manufactured by Golden Lady for quite a long time before the trademark was registered. The counterparty appealed this decision in early 2016, the disputed was reconsidered by the Presidium of IP Court twice and returned back to the first instance. In the end, when the case was being considered by the first instance for the third time, the parties managed to come to a mutually beneficial agreement, due to which if the trademark in dispute is reinstated, it is to be assigned to Golden Lady as initial and proper proprietor of the brand. The IP Court agreed to promote amicable settlement and send the case back to Rospatent to finalise the assignment. Golden Lady Company was represented as advised on the case by partners of A.Zalesov&Partners, Alexey Zalesov, Maria Makhlina and Irina Ozolina.


Published: February 7, 2018

Alexey Zalesov was re-elected as a President of AIPPI Russian National Group

On February 7th the regular members meeting of the Russian national group AIPPI took place. During the meeting members of the Group discussed current development of the group, approved reports of the President, Secretary and Revision Commission of the Group, and also approved the suggestion of the Council to enlarge the quantity of Council members from 7 to 9. Alexey Zalesov was re-elected as a President of the Group for the next two years term. We thank our colleagues for support.