Protected a Pharmaceutical Company's Intellectual Property Rights to a Packaging Design

The Essence of the Case

In 2011, a foreign pharmaceutical company developed a new packaging design for a smoking cessation product. The Russian distributor proposed certain modifications, but the manufacturer rejected these. In 2013, the company registered the pharmaceutical product in Russia featuring the amended design.

At the end of 2022, two batches of the medicinal product were seized by Russian customs. The basis for the seizure was that the drug's packaging design had been included in the Customs Register of Intellectual Property Items by a former director of the ex-distributor, who declared herself the author. She had previously deposited the updated design of this medicinal product and obtained a patent for an industrial design.

As a result of the goods being seized, the foreign pharmaceutical company was deprived of the opportunity to import the medicinal product into Russia.

The Task

To have the goods released from seizure, restore imports, and defend the company in court against the claims of the "false author": in particular, to have two batches declared to be counterfeit and to recover RUB 100 million in compensation.

Challenges

Events that took place a decade ago led to the correspondence with the distributor being partially lost. The respondent had a patent from the regulator Rospatent, which in formal terms gave it an advantage. The dispute simultaneously involved customs, copyright, and patent law.

What we did

Lawyers from the Intellectual Property and Life Sciences practices, relying on the surviving correspondence, confirmed that the company's employees were actually the authors. They provided support for the proceedings for over three years, including two rounds of hearings before courts of three levels, and assembled a substantial volume of evidence. A court-appointed expert examination was ordered in the case. Ultimately, the lawyers from Pepeliaev Group succeeded in proving that the false author was not the true creator of the updated packaging design. They managed to have the respondent's patent invalidated, thereby depriving the respondent of one of their key arguments.

Result

The Cassation Court confirmed that the respondent was not the author of the packaging design for the smoking cessation medication. The patent was cancelled, the seizure was lifted, and imports were restored.

Significance 

Thanks to the efforts of the lawyers from Pepeliaev Group, the pharmaceutical company's rights to distribute its medicinal product in Russia have been restored. In addition, so have the rights of Russian consumers to obtain a high-quality medication for stopping smoking.