Russia

Parallel importing is the topic of the moment in Russian intellectual property. It was explicitly illegal – a form of trademark infringement – until a commercial court ruled that restrictions could constitute a form of unfair competition. This was then followed by the Constitutional Court ruling that judges should be much more lenient in parallel import cases than in basic trademark infringement or anti-counterfeiting cases, meaning no substantive damages. Practitioners are now eagerly waiting to see how this decision will be interpreted in the future and whether the government will intervene legislatively.

Firms: enforcement and litigation

Firms: prosecution and strategy

Alrud Law Firm

The pragmatic lawyers at Alrud appreciate that every move must not only be legally correct, but also commercially sound. Before filing a trademark or initiating proceedings against a competitor they carefully consider all the pros and cons in tête-à-têtes with their clients. Larisa Lysenko and Maria Ostashenko are the stars of the show. “Larisa shows great attention to detail and a deep understanding of her clients’ markets. It’s a pleasure cooperating with her on matters in Russia as well as further afield.” The entrepreneurial spirit of Ostashenko makes her a great fit for start-ups. She has the grit and creative genius to build up portfolios brick by brick.

ARS-PATENT

Established in 1993, ARS-Patent is a firm fixture on Russia’s IP landscape. Its squad provides comprehensive brand protection from two acclaimed offices in St Petersburg and Moscow; filing, prosecution, monetisation and enforcement mandates are all dispatched with alacrity. Elena Solovyova, Anna Bogdanova and Tatiana Tarasova are the three names to remember. Solovyova has published extensively on litigation techniques for cases concerning well-known trademarks in Russia and across the Commonwealth of Independent States (CIS). The commercially savvy Bogdanova is at her best in matters relating to the registration of cession and licence agremeents. Engineering clients flock to Tarasova because she worked in the sector before entering the field of intellectual property and therefore appreciates its unique pressure points.

Baker McKenzie – CIS Limited 

Global titan Baker McKenzie is “a standout firm in the IP space, with outstanding trademark prosecution and enforcement experts and a huge slice of the market”. Household names of all stripes use it as a one-stop shop for brand protection and avail themselves of its state-of-the-art anti-counterfeiting MAPS software. The most famous member of the team in Russia is the “proficient and experienced” Eugene Arievich. “He is one of the most respected people in the IP world. His practice spans all areas of intellectual property throughout the CIS, with a special emphasis on trademark litigation.” Denis Khabarov and Margarita Divina flank Arievich. Khabarov’s curriculum vitae includes activity such as the successful recovery of unlawfully registered domain names for a major international beauty product manufacturer and advising multinationals on the establishment and maintenance of customs surveillance measures. Divina, meanwhile, shines in the transactional space, having the business savvy to sew up favourable contracts with minimal fuss.

Dentons

Dentons’ “top-notch” trademark team in Russia is renowned for its stellar enforcement support. Working closely with counterparts abroad, it handles cross-border cases in the life sciences, pharmaceuticals and electronics space efficiently and effectively and organises anti-counterfeiting campaigns across the CIS all the time. Denis Voevodin is the first port of call for most interested parties. “He’s one of the best IP lawyers in Russia, with over 20 years’ experience and everyone’s respect.”

DLA Piper Rus Limited

DLA Piper’s presence in more than 40 countries throughout the Americas, Europe, the Middle East, Africa and Asia-Pacific positions it perfectly to support multinationals. In Russia, its squad offers an impressive array of services, from clearance searches to cut-and-thrust courtroom representation. Michael Malloy and Pavel Arievich are the anchors of the practice. Getting signatures on the bottom lines of lucrative contracts is bread and butter for crack negotiator Malloy, while domain name disputes are the metier of web whizz Arievich.

Euromarkpat

For more than half a century, Euromarkpat has been serving up watertight multi-jurisdictional brand protection to local and international companies from eight offices across Albania, Estonia, Germany, Russia, Kosovo, Mongolia, Ukraine and Uzbekistan. Having a wealth of experience in opposition and cancellation proceedings before the Russian Patent and Trademark Office (Rospatent), Marina Grineva is the go-to contact in Moscow. She manages portfolios with flair and finesse.

Gorodissky & Partners

Because the practitioners at Gorodissky & Partners have both exhaustive trademark law knowledge and specialised industry sector expertise, they can identify the correct classification of goods and services immediately and sort out similarity issues without breaking a sweat. Labelled the “very best” firm on the market by peers, it has an exalted reputation in Russia and the CIS. Department head Vladimir Trey is the first choice for many. He has the imagination and vision to get the green light for colour, sound and three-dimensional marks. His teammate Valery Medvedev also boasts “extensive knowledge and practical experience in the registration of trademarks” and the patronage of some huge international names. “Vladimir Biriulin is an exceptional brand protection lawyer known for his rock-solid strategies.” Advising a well-known Australian wine company on how to defend against charges of trademark infringement and a multimillion-dollar compensation demand is just one part of Alexey Kratiuk’s recent workload. Large US pharmaceutical and electronics companies turn to Natalia Stepanova for cradle-to-grave branding counsel, she has also published widely on online issues.

Gowling WLG 

Gowling WLG provides “excellent, practical and efficient advice” to the likes of Rosatom, Cisco Systems and Henkel. “Its lawyers are clear, communicative and solution-oriented in everything they do.” Wearing the captain’s armband, David Aylen is the most famous of these. “He is an insightful and brilliant lawyer who knows what clients expect and delivers on that. He has somehow managed to become an anti-counterfeiting sage in a part of the world that still has a major underground economy where fake goods flourish – which is no small achievement. On top of that, he takes regular trips to the United Kingdom, plays a prestigious role in INTA and has a unique knowledge of Canadian IP law, all of which makes his skillset extremely well suited to serving the interests of foreign clients.” His running mate Alexander Christophoroff is another enforcement ace, who of late has been supporting Napa Valley Vintners on a case that set a significant precedent for the protection of foreign appellation-of-origin registrations in Russia. Julianna Tabastajewa provides “excellent support” on tricky domain-name matters. The “ever-responsive and clear” Maria Aronikova has plenty of fans in the food and beverages and automotives sectors and Marina Drel complements an outstanding trademark enforcement practice with extensive advertising and product regulation knowledge.

Hogan Lovells (CIS)

Deep knowledge of all the key market sectors in Russia combined with an exhaustive IP service menu continues to win Hogan Lovells huge mandates. On the prosecution side, the firm has been managing the trademark portfolio of Ford, Mattel and McDonald’s to name just three of its notable clients. As regards enforcement, the side continues to organise significant and successful anti-counterfeiting operations for toy and manufacturing companies. Leading the charge in Moscow is the “extremely well known” Natalia Gulyaeva. Her reputation is well founded: she is fazed by nothing and knows exactly what will cut the mustard in critical cases.

Intellect-S

Established in 2000, Intellect-S provides holistic IP support on budget and on time to an array of brand owners. A recent highlight for the tech-savvy team is representing Eastern Europe’s biggest manufacturer of flexible heat-insulted plastic pipes for central heating and hot-water supply on a matter that led to the largest ever award in the history of Russian domain-name litigation. Anna Kholobudovskaya and Svetlana Veresova are dependable choices. The “highly qualified and extremely responsive” Kholobudovskaya specialises in international trademark registration. Another formidable filer, Veresova is “super attentive to clients’ needs” and au fait with all the subtleties of Rospatent examination proceedings.

Ivanov Makarov & Partners

“The professionalism of the lawyers at Ivanov Makarov & Partners immediately inspires confidence in clients. You know they will conduct comprehensive searches into the existence of previously registered or filed for trademarks and then provide solid, comprehensive advice on how to overcome any problems.” Co-founder Dmitry Makarov is certainly someone who goes the extra mile for clients. He works around the clock to establish and enhance their portfolios and ensure that competitors never manage to take them by surprise. It is the same with Mark Chizhenok, an experienced litigator who skilfully handles commercially vital cases.

Kachkin & Partners

Major international coffee shop chains, fast-food outlets and investment companies all entrust Kachkin & Partners with their trademark headaches. They know that the firm will consistently provide them with rock-solid, commercially savvy and uniquely tailored support. A particular recent highlight for the side has been their representation of Domino’s Pizza in a complicated cybersquatting lawsuit. This was handled by enforcement virtuoso Ekaterina Smirnova, who received particularly emphatic praise from interviewees. “She’s client-oriented and flexible – someone who’s always available and provides instant responses to all queries. On top of that her legal knowledge is flawless.”

Mikhailyuk Sorokolat & Partners

With 180 IP professionals in offices in Belarus, Georgia, Kazakhstan, Moldova, Russia, Ukraine and Uzbekistan – not to mention cutting-edge portfolio management software – Mikhailyuk Sorokolat & Partners has what it takes to effectively solve any cross-border branding problem. Name partner Anna Mikhailyuk straddles the contentious/non-contentious divide with ease. Lately she has been handling anti-counterfeiting operations on behalf of a notable foreign client; these are extremely complex due to the number of infringers involved and the significant time difference between the customs’ location and the clients’ own office. Her dedication, diligence and impeccable organisational skills are making all the difference.

Noerr LLP

On the scene since 1988, Noerr is one of the largest and oldest international law firms operating in Russia. It has an incredible track record in internet-related IP disputes; cybersquatting and parallel import issues are real fortes. Of late, a highlight has been their work for Shell in a precedent-setting case against a large chain of filing stations – there have been no prior examples of the successful enforcement of exclusively colour trademarks. Viktor Gerbutov played a key role in this case. He is a hard-hitting litigator not afraid of entering uncharted territories. His other clients include Renault, Swatch and Volvo.

Patent & Law Firm YUS LLC

Successfully representing AO Grand Tobacco against Philip Morris in the Commercial Court is just one example from the illustrious track record of Patent & Law Firm YUS. Other clients include Societe des Produits Nestlé and Giorgio Armani. Founding partner Sergey Lovtsov is a rainmaker who leads by example. He maps out portfolio management strategies with care and creativity. His teammate Olesya Zakharova is another “go-to” choice. “She has substantive trademark knowledge and is exceptionally clear, responsive, practical, meticulous and cost-effective. On top of that, her English and communication skills are absolutely fantastic; international clients know that the advice they get will be clear and succinctly expressed.”

Pepeliaev Group

Thanks to offices in Krasnoyarsk, Vladivostok and Yuzhno-Sakhalinsk among its network of nine, Pepeliaev Group is uniquely positioned to provide the full range of IP services in Siberia, the Primorye Territory and East Asia – as well as elsewhere in Russia. Yuri Yahin and Valentina Orlova represent the “excellent” firm at its very best. Yahin is an anti-counterfeiting ace, while Orlova shines in Rospatent proceedings, owing to intimate knowledge of how it operates thanks to a spell working there as head of legal. Recently they teamed up to support the German manufacturer of dairy products Ehrmann on a significant dispute against a private entpreneuer; this concerned the question of what to do when it is not always possible to definitively state that the designations used are confusingly similar to the protected trademark.

Rouse & Co International

Established in the United Kingdom in 1990, Rouse now has 17 offices across Africa, Asia, Europe and the Middle East. Its Moscow base is best known for its trademark enforcement work, but also it offers classy prosecution and portfolio management support. The technical sharpness, pragmatism, responsiveness and experience of Stuart Adams make him a redoubtable choice. He is currently assisting one of the largest consumer goods companies in the world, Procter & Gamble, on anti-counterfeiting campaigns relating to its Duracell, Gillette and Head & Shoulders products.

Sojuzpatent 

The oldest IP law firm operating across the territory of the former USSR, Sojuzpatent is a well-established player with a stellar reputation. A striking number of its members were previously employed at Rospatent, making it a top choice for filing and prosecution; applications are drafted assiduously with an appreciation of what examiners really look for. The personable, ever-eloquent Tatiana Petrova is a client favourite. She writes reports that make for easy reading in the C-suite.

Zuykov and partners LLC 

Zuykov and partners operates a cracking trademark practice. Whatever the issue – prosecution, licensing or litigation – its sophisticated lawyers will be able to iron it out with alacrity; representing clients in complex Rospatent proceedings is a real forte for the team. Managing partner Sergey Zuykov stands out for his refined communication skills and outside-the-box thinking. Another exceptional practitioner, Alexandra Pelikh debuts in the WTR 1000 for 2019 thanks to effusive feedback. “Alexandra is extremely attentive to clients’ needs and goes out of her way to meet them.” Together, Zuykov and Pelikh have been assisting the Academic Song and Dance Ensemble of the troops of the Russian National Guard against some of the country’s most powerful institutions, including the Ministry of Defence.

Other recommended experts

Captain of his self-titled firm, which he established in 2017, Alexander Baranchikov runs a sizeable portfolio management practice. He demonstrates excellent technical proficiency and always finds ways to add value for his clients. Domains whizz Elena Berger heads the IP practice at Capital Legal Services. She is completely at home in cyberspace. Daria Chernysh of KIAP Attorneys at Law is “one of the best IP lawyers on the market, with a high level of trademark knowledge and wide-ranging expertise. She’s business-oriented, easy to communicate with, professional and great at problem-solving.” Dmitry Markanov is “reliable, fast and has outstanding communication skills”. The PATENTUS professional is on the frontlines of the fight against fakes and has an excellent success rate in anti-counterfeiting actions. Dispute resolution is bread and butter for Capital Legal Services’ Irina Onikienko, who has 20 years of courtroom experience under her belt. Anastassia Sinitsyna at Dementiev, Kliukin & Partners is adept at managing complex trademark portfolios across Russia, the CIS and Eastern Europe. The business savvy Ekaterina Tilling of Tilling Peters wraps up favourable licensing contracts for her clients time and time again. Goltsblat’s Elena Trusova is “very well versed in IP disputes. She knows how to litigate on everything from trademark to copyright issues and has a lot of experience. You see her in court all the time.” Aleksey Zalesov at A Zalesov & Partners is an “extremely strong IP litigator” renowned for his classy pleadings. Andrey Zelenin of Lidings is in his element when representing financial, energy and pharmaceutical companies in cliff-edge disputes.

Individuals: enforcement and litigation

  • Eugene A Arievich - Baker McKenzie – CIS Limited
  • Alexander Christophoroff - Gowling WLG
  • Natalia Gulyaeva - Hogan Lovells (CIS)
  • Denis I Khabarov - Baker McKenzie – CIS Limited
  • Denis Voevodin - Dentons
  • Stuart Adams - Rouse & Co International
  • Vladimir Biriulin - Gorodissky & Partners
  • Mark Chizhenok - Ivanov Makarov & Partners
  • Marina Drel - Gowling WLG
  • Julianna Tabastajewa - Gowling WLG
  • Ekaterina M Tilling - Tilling Peters LLC
  • Maria Aronikova - Gowling WLG
  • Elena Berger - Capital Legal Services LLC
  • Daria Chernysh - KIAP Attorneys at Law
  • Viktor Gerbutov - Noerr LLP
  • Larisa Lysenko - Alrud Law Firm
  • Dmitry Markanov - PATENTUS
  • Irina Onikienko - Capital Legal Services International
  • Maria Ostashenko - Alrud Law Firm
  • Alexandra Pelikh - Zuykov and partners LLC
  • Ekaterina Smirnova - Kachkin & Partners
  • Elena Trusova - Goltsblat BLP LLP
  • Aleksey Zalesov - A Zalesov & Partners Patent & Law Firm LLC 
  • Andrey Zelenin - Lidings Law Firm
  • Sergey Zuykov - Zuykov and partners LLC

Individuals: prosecution and strategy

  • Eugene A Arievich - Baker McKenzie – CIS Limited
  • David Aylen - Gowling WLG
  • Margarita Divina - Baker McKenzie – CIS Limited
  • Marina Grineva - Euromarkpat
  • Natalia Gulyaeva - Hogan Lovells (CIS)
  • Valentina Orlova - Pepeliaev Group
  • Olesya Zakharova - Patent & Law Firm YUS LLC
  • Pavel Arievich - DLA Piper Rus Limited
  • Alexander Baranchikov - Baranchikov IP & IT Attorneys
  • Vladimir Biriulin - Gorodissky & Partners
  • Michael J Malloy - DLA Piper Rus Limited
  • Irina Onikienko - Capital Legal Services International
  • Tatiana Petrova - Sojuzpatent 
  • Anastassia Sinitsyna - Dementiev, Kliukin & Partners
  • Elena A Solovyova - ARS-PATENT
  • Vladimir Trey - Gorodissky & Partners
  • Elena Berger - Capital Legal Services LLC
  • Anna Bogdanova - ARS-PATENT 
  • Daria Chernysh - KIAP Attorneys at Law
  • Anna Kholobudovskaya - Intellect-S
  • Alexey V Kratiuk - Gorodissky & Partners
  • Sergey Lovtsov - Patent & Law Firm YUS LLC
  • Larisa Lysenko - Alrud Law Firm
  • Dmitry Makarov - Ivanov Makarov & Partners
  • Valery Medvedev - Gorodissky & Partners
  • Anna Mikhailyuk - Mikhailyuk Sorokolat & Partners
  • Maria Ostashenko - Alrud Law Firm
  • Ekaterina Smirnova - Kachkin & Partners
  • Natalia Stepanova - Gorodissky & Partners
  • Tatiana Tarasova - ARS-PATENT
  • Svetlana Veresova - Intellect-S
  • Yuri Yahin - Pepeliaev Group