Intellectual property and trademarks

Registered, amended and extended the durations of the client's trademarks in almost 90 jurisdictions

The IP practice was requested to amend and extend the durations of trademarks owned by one of the largest Russian groups dealing in raw materials in almost 90 jurisdictions. Additionally, the client requested us to provide support with the documents required for the registration of national trademarks in 7 jurisdictions in Central America and Africa.

Analysed the client's products for a potential infringement of a competitor's patent Pepeliaev Group's Intellectual Property and Trademarks Practice provided advice to an American corporation, a leading manufacturer of healthcare products as well as products for personal, professional and industrial hygiene.

Defended the company Drinks from Chernogolovka-Aqualife in disputes with The Coca-Cola Company Pepeliaev Group’s team from the Intellectual Property and Trademarks Practice has successfully defended the company Drinks from Chernogolovka-AQUALIFE in its dispute with The Coca-Cola Company.

Pepeliaev Group’s lawyers represented a client in the Russian Intellectual Property Court (the “IP Court”): the legal protection of a similar trademark owned by a bad-faith rightholder was declared invalid. The firm’s lawyers successfully represented Kavminvody JSC (“Kavminvody”), a renowned producer of the Novoterskaya Tselebnaya mineral water, in the IP Court.

Successfully resolving a 'domain dispute' over a trademark infringement IP lawyers at Pepeliaev Group successfully safeguarded the interests of our client, a leading manufacturer of children's clothing, in a dispute over a trademark infringement.

Protecting the interests of a large iron and steel company in court. Pepeliaev Group's lawyers succeeded in protecting the interests of the client (a large iron and steel company ) in court, preserving for it an important part of the patent.

Participating in the development of an order of the Russian Federal Service for Intellectual Property, Patents and Trademarks ("Rospatent") on behalf of FIFA Pepeliaev Group's lawyers on behalf of FIFA participated in the development of an order of the Russian Federal Service for Intellectual Property, Patents and Trademarks ("Rospatent").

Registering contracts to dispose of IP rights Drafted or amended and registered with the Federal Service for Intellectual Property contracts to dispose of exclusive rights to intellectual property, licence contracts and franchise contracts.

Registering trademarks abroad We coordinated work in relation to registering in all the CIS countries the trademarks of a Russian mobile services operator, and registering the trademarks of a large foreign company in all CIS countries, Vietnam, Cambodia, Laos, Myanmar and the USA.

Registering non-standard trademarks We have extensive experience in registering trademarks including those that are rare or are difficult to register: sound marks, slogans, hieroglyphic marks and combinations of two-colour stripes.

Drafting a franchise agreement Developed industry-specific franchise agreements for the catering and exhibition industries with heavy emphasis on staff training.

Using employee inventions Advised major companies in the oil & gas and metal industries on various patent matters including using inventions created by employees (authors) when performing their employment duties or a specific task set by the employer (employee inventions).

Exhaustion of rights to use a trademark Analysed whether the rights of third parties have been exhausted in relation to the possibility of using in advertisements the trademarks owned by our clients that are major players in the Russian car market.

Special procedure for the use of the IP Developed a special procedure for the use and protection of the FIFA's intellectual property in the context of the 2018 World Cup being organised and staged in Russia.

Preventing counterfeit products from being sold Acted on behalf of international telecommunication companies in seeking the ways to prevent counterfeit products being sold in Russia and the CIS. Together with the customs authorities, we succeeded in taking steps to prevent such counterfeit products from being imported into markets in Russia and CIS.

Initiatives against counterfeit products In association with a network of patent attorneys across the CIS, we are combating the production and sale of counterfeit products that are being distributed in violation of leading international food producers' rights, one such food producer holding the rights to more than 500 trademarks.

Dispute regarding improperly registered trademarks Successfully represented world famous FMCG and food producers against the parties who had improperly registered trademarks and demanded compensation for the alleged infringement of their rights.

A copyright dispute Successfully represented telecommunication companies in several cases concerning infringement of copyright and neighbouring rights to music used in TV commercials.

Pre-trial resolution of a trademark dispute Drafted claims for the benefit of international oil and gas producers concerning exclusive rights being infringed to trade names and trademarks as well as unfair competition and improper advertising. As a result of this work, within a very short time the use of the trademarks discontinued, trade names were changed and websites with improper advertising were removed.

Court disputes concerning IP Represented clients in court disputes concerning IP, including in particular in the IP Rights Court, and in the Russian regulator Rospatent's Patents Disputes Chamber, as well as in other courts (both commercial and the general jurisdiction courts) in Moscow and Moscow Region, Kaluga, Belgorod, Rostov-on-Don, and Amur Region among others.