Since its inception in 2013, Russia’s specialised IP Court has been working wonders; lowering the cost of enforcement and boosting confidence among brand owners. However, 2017 has seen the court issue a string of decisions that appear to clash with administrative case law and even official legislation on what constitutes trademark infringement, which has created considerable confusion. With regards to anti-counterfeiting measures in Russia, there is significant praise from practitioners for the cooperative efforts of customs officials.
Firms: enforcement and litigation
Firms: prosecution and strategy
Established in 1993, ARS-PATENT has spent two-and-a-half decades refining its customer service; its lawyers take the time to comprehensively explore their clients’ markets so that they can provide well-informed, holistic solutions which will not come unstuck in bad weather. Nothing is beyond the team, which is as strong in prosecution as it is securing courtroom remedies. The nimble-witted Elena Solovyova embodies this versatility, with significant experience registering trademarks in accordance with the Madrid Agreement and representing clients in disputes. Having worked as an engineer at the All-Russia DI Mendeleyev Scientific and Research Institute for Metrology, Tatiana Tarasova has truly unique technical knowledge. She dives head-first into deep waters and surfaces with pearls of wisdom for her clients. The commercially savvy Anna Bogdanova handles transactional matters with flair and finesse – her watertight licensing contracts keep on giving.
Baker McKenzie - CIS Limited
“Baker McKenzie is one of the largest law firms in the world, with plenty of outstanding trademark strategists and litigators. The quality of its work is consistently high and clients are well cared for.” In Russia, Baker McKenzie flies its flag from two well-established offices in Moscow and St Petersburg, which serve up first-rate filing, licensing and enforcement support, with backup in multi-jurisdictional matters from its sprawling 77-office network. Labelled “the godfather of trademark law” by peers, “creative litigator” Eugene Arievich is a stand-out star: “he’s the most highly regarded IP lawyer in the country.” Denis Khabarov and Margarita Divina complete the market-leading line-up. Khabarov is another enforcement ace and has masterminded scores of anti-counterfeiting campaigns in his time, while Divina is a licensing magus and is “extremely well known for her work in regard to IP contracts” – she has the business nous to deliver the goods time and again.
By head count the world’s largest law firm, Dentons has a presence in over 60 countries and draws on formidable IP law resources. Its “strong reputation in the Russian market” is the result of “extensive experience” assisting entrepreneurs, public entities and multinationals in all manner of matters, from clearance searches to courtroom fights. The Moscow-based Denis Voevodin heads up the firm’s trademark practice in Europe. He is a savvy, street-smart litigator with the creativity, commercial awareness and composure to succeed in the thorniest of cases.
DLA Piper Rus Limited
Understanding how high the stakes can be for brand owners, DLA Piper works around the clock for its clients and, as a matter of routine, factors in all commercial considerations before providing counsel. Portfolios are stewarded with immense care – team members in Moscow work shoulder to shoulder with colleagues across the DLA Piper global network to hunt down monetisation opportunities – and enforcement battles are fought resourcefully and pragmatically. The “very professional and personable” Michael Malloy skippers the Russian IP practice and has many loyal fans; technology transfers see him at his best. Pavel Arievich is an all-rounder who effortlessly straddles the contentious/non-contentious divide; domain name work is a strong suit for him.
Egorov Puginsky Afanasiev & Partners
Egorov Puginsky Afanasiev & Partners is a full-service firm with the regional know-how to handle matters across the Commonwealth of Independent States (CIS); it also has established camps in Ukraine and Belarus, as well as associate offices in the United Kingdom and the United States. The IP squad is flanked by robust corporate law, M&A and restructuring practices, which means that clients can rest easy entrusting all matters pertaining to trademarks in its care, safe in the knowledge that the side will approach matters from a 360-degree perspective. Pavel Sadovsky is an enforcement hotshot who has represented an array of household names in his time. He is a longstanding and active figure in the IP community and currently serves as vice chairman of the International Chamber of Commerce’s Russia Commission on Intellectual Property.
Euromarkpat is a formidable force in trademark portfolio management. Its shrewd, commercially minded lawyers consult with clients to contrive incisive, informed strategies that reap long-term results. Headquartered in Germany, it is particularly well-positioned and experienced in handling matters before the EU Intellectual Property Office, but also has affiliate offices in Russia and elsewhere in the CIS, providing it with blanket coverage across the region. The “extremely strong” Marina Grineva is highly recommended for her reliability and her practical approach to prosecution. She thinks outside the box to devise and file bulletproof applications.
Gorodissky & Partners
“Gorodissky is by far the biggest IP firm in Russia. It’s number one by any measurable criteria – filings, litigations handled, whatever – and its track record is amazing; the lawyers there have tremendous experience.” The illustrious firm has been plying its trade since 1959 and has a footprint of 12 offices; of which 11 are in Russia and one is in Ukraine. This comprehensive coverage makes it a popular choice for multinationals whose products have flooded the Russian market, plus local businesses whose operations extend outside Moscow and St Petersburg to the industrial heartland or border regions, as well as those who place a premium on face-to-face contact. Vladimir Biriulin is the first port of call for many rights holders. He does it all, from clearance searches to enforcement work, while also maintaining a sterling reputation in the IP community. Vladimir Trey, Alexey Kratiuk, Valery Medvedev and Natalia Stepanova are all prize fighters on the non-contentious side. Helming the practice, Trey has an all-encompassing comprehension of non-traditional marks and appellation of origin issues, as does Kratiuk, another innovative lawyer operating at the forefront of his field. Managing partner Medvedev delivers in rights transfers time and time again; technically astute, he threads together flawless contracts. Stepanova has published extensively on online brand protection and internet issues. She has an inquisitive mind and everything she writes is exhaustively researched and well argued.
Companies of all stripes are attracted to the global reach offered by Gowling WLG, which spans the globe with 18 offices in principal business hubs around the world. The “responsive, attentive and creative” Moscow cadre is “one of the major players in the country, having a number of much-respected IP experts and having been involved in plenty of big cases”. It is as adept at assisting international players protect their marks in Russia and across the CIS as it is navigating local businesses through overseas expansion. With a “perfect understanding of the market” David Aylen is a cogent choice across the board. Recently he has been busy helping Rosatom – the Russian State Atomic Energy Corporation – register trademarks in 25 countries, but he is also “well attuned to the needs of North American clients. He understands how to frame advice in a commercial context and delivers work of the highest standard, while staying within specified budgets”. Another gold-ranked individual, Alexander Christophoroff possesses invaluable experience from his time at the Russian Patent and Trademark Office, leveraging this to expertly escort clients through problematic opposition proceedings. Marina Drel and Julianna Tabastajewa vigorously take the fight to forgers. Drel is an anti-counterfeiting ace who can organise seizures at the drop of a hat. Tabastajewa can think on her feet and always pulls out all the stops in hard cases battling to the last; while also knowing which buttons to push in settlement negotiations.
Grebneva & Partners Law Firm
Sited in Siberia, Grebneva & Partners has its sights firmly trained on the mining, natural resources and construction industries. It delivers a thoroughgoing customer service with total transparency where fees are concerned, constant and concise communication and a laser focus on realising clients’ business objectives. It is at its best registering awkward marks and finding unique ways to exploit portfolios. Anna Voytsekhovich is a notable contact.
Hogan Lovells (CIS)
Hogan Lovells would make a fabulous partner for any multinational looking to navigate Russia’s ever-evolving business environment and convoluted legal regulations. The firm is intimately familiar with the local culture and has significant experience before Rospatent and an array of courts. Leading the IP, media and technology practice, the multi-talented Natalia Gulyaeva is “fantastic when it comes to client relations. She handles every note and email she receives with great care and still somehow manages to respond extremely quickly”. Supremely capable of tackling whatever befalls a client – whether contentious or non-contentious – Gulyaeva is the finished article.
Ivanov Makarov & Partners
Ivanov Makarov & Partners is a firm fixture on Russia’s IP landscape. It boasts an impeccable reputation at Rospatent, where it has filed countless trademark applications over the years and in all manner of courts, from those in Saint Petersburg to Krasnodar. Complementing unique local knowledge with a flexible fee policy and lightning-fast response times, the firm is a top choice for domestic and foreign clients alike. Co-founder Dmitry Makarov and Mark Chizhenok lead from the frontline. Makarov is a versatile operator who assesses filing issues and monetisation opportunities within their wider context and then acts pragmatically, while Chizhenok is “an impressive litigator who always exceeds his clients’ expectations”.
Liapunov & Co
Established in 1994, IP boutique Liapunov & Co has become a prime pick for companies looking to protect their trademarks across the CIS, the Baltics and Ukraine. Its business-focused lawyers take the time to get to know their clients’ industries and exhaustively assess the pros and cons of any action before providing pertinent advice. Managing partner Anna Reznichenko exemplifies this ethos. She is not one to delegate; she prefers to supervise each issue personally and stays in close contact every step of the way. Getting an abstruse yet potentially lucrative transfer of IP rights finalised is the sort of challenge she loves.
One of the longest-established international law firms in Russia, Noerr runs a robust IP practice within its full-service offering. For more than 25 years, it has been furnishing clients with pragmatic, business-conscious interdisciplinary trademark and tax advice; with a particular focus on assisting with the acquisitions of big brands. Enforcement is a staple of the squad’s workload too – one recent highlight being its resolute support of Volvo Group in parallel import proceedings. Representing the Swedish car marque in this endeavour, Viktor Gerbutov is a trusted ally in the war against fakes. He has appeared in courts and arbitration tribunals of all kind, and always keeps his feet firmly on the ground; when it would be better in the long run to settle, Gerbutov does not hesitate and opens up lines of negotiation immediately.
Patent & Law Firm YUS LLC
The “reliable and ambitious” Patent & Law Firm YUS dishes out “efficient solutions of the highest standard concerning the acquisition, protection, use and assignment of IP rights” to an assortment of local and international companies. Having been on the scene since the modern Russian market for trademark protection was in its infancy, the firm carries significant cachet among examiners at Rospatent. Sergey Lovtsov is a renowned name in the IP world and publishes widely on hot prosecution and litigation topics. His team mate Olesya Zakharova is a cosmopolitan strategist, her metier lies in establishing Russian rights for foreign clients and she is fluent in English, French and German, as well as Russian.
Thanks to a cadre of “excellent, vastly experienced” lawyers, Pepeliaev Group has an absolutely dazzling track record in the courtroom, winning nearly every mandate it has taken on. However, it is also adroit at portfolio management and never passes over the chance to monetise its clients’ trademarks. Recently it has taken on a slew of new mandates from China and South Korea – attracted by offices in Beijing, Guangzhou, Shanghai and Seoul and in strengthening its relationship with a prestigious state-owned entity. Captaining the practice, Valentina Orlova is a magnet for heavyweight brands. Her illustrious career has seen her serve as head of the legal department at Rospatent and as a member of the delegation representing Russia in negotiations regarding its accession to the World Trade Organisation. At Pepeliaev she exploits her varied experiences to support household names such as FIFA, BMW and Richter Gedeon Nyrt.
Rouse & Co International
Global IP colossus Rouse breaks into the WTR 1000 Russia listings for the first time in 2018 on the back of a stellar year for its 2013-established Moscow office. One highlight saw the team represent Ford in a case against Emex/TMR involving the parallel import of Ford and Motorcraft-branded spare parts without consent; the matter is currently being appealed to the Supreme Court. The “pragmatic and ever-responsive” Stuart Adams is the lynchpin of the practice. He has managed cases in over 80 countries and has a particular penchant for anti-counterfeiting. “He’s one of the very best lawyers around, with commercial awareness that is second to none.”
“Sojuzpatent is the oldest firm in the country providing IP services and it shows in the strength of its support; its practitioners have a wealth of experience.” With no fewer than 50 registered Russian and Eurasian IP attorneys and lawyers in its ranks, it has the manpower to efficiently oversee the portfolios of the world’s biggest names; on top of this, it has invested in sophisticated software which ensures that the status of matters can be checked 24/7, with updates then communicated instantly. Leading the trademark practice, Tatiana Petrova has forged ironclad protection for names such as Ferrero and Hasbro with her resolute drafting abilities and far-sighted wisdom.
Vakhnina and Partners
Brand owners in the market for collaborative, hands-on portfolio management and creative resolutions to infringement conundrums need look no further than Vakhnina and Partners. This nimble IP boutique strikes just the right balance, with worldly-wise name partner Tatiana Vakhnina flanked by a gang of go-getting associates. Nearly four decades of experience make Vakhnina an agile trademark aficionado with the wherewithal to edge around even the most outwardly insurmountable obstacles, whether in Russia or elsewhere.
Flourishing boutique Zuykov & Partners is making waves in Russian IP law. It has chalked up a notable string of successes before Rospatent and become a common sight in Moscow courtrooms – not to mention acting in arbitration tribunals for Canonpharma Production (against Pfizer) and Golder Electronics (against Dyson Technology). Founding partner Sergey Zuykov led the line in both of these instances. He is an enforcement maven, with a sixth sense for when to push hard and when a lighter touch would be more effective.
Other recommended experts
Quick-witted and meticulous, Ksenia Andreeva at Morgan Lewis & Bockius builds unassailable IP contracts brick by brick for a plethora of companies in the media, technology and telecommunications industries. At Intellect-S Anna Kholobudovskaya specialises in international trademark registration; nothing escapes her gimlet eye. Dmitry Markanov at PATENTUS is a first-rate litigator with hundreds of IP cases to his name and in-house experience at a major Russian automobile manufacturer to boot. Irina Onikienko rudders the dispute resolution and IP practices at Capital Legal Services with an assured hand. Her encyclopaedic knowledge of applicable case law and strong communication skills have won her a legion of loyal fans. Anastassia Sinitsyna is a strategic whizz, who manages portfolios artfully and, with considerable marketing and advertising expertise. The erstwhile Gowling WLG partner joined Dementiev, Kliukin & Partners in August 2017. Ekaterina Tilling at Tilling Peters is a “really talented and well-recognised IP litigator known for delivering top work”. Lidings’ managing partner Andrey Zelenin knows “how to make complex legal matters digestible. He has an outstanding attitude and is very responsive, too”.
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
- Pavel Sadovsky - Egorov Puginsky Afanasiev & Partners
- Julianna Tabastajewa - Gowling WLG
- Ekaterina M Tilling - Tilling Peters LLC
- Tatiana Vakhnina - Vakhnina and Partners
- Viktor Gerbutov - Noerr OOO
- Dmitry Markanov - PATENTUS
- Irina Onikienko - Capital Legal Services International
- Andrey Zelenin - Lidings Law Firm
- Sergey Zuykov - Zuykov & 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
- Vladimir Biriulin - Gorodissky & Partners
- Michael J Malloy - DLA Piper Rus Limited
- Irina Onikienko - Capital Legal Services International
- Tatiana Petrova - Sojuzpatent
- Anastassia Sinitsyna - Dementiev Kluikin & Partners
- Elena A Solovyova - ARS-PATENT
- Vladimir Trey - Gorodissky & Partners
- Ksenia Andreeva - Morgan Lewis & Bockius LLP
- Anna Bogdanova - ARS-PATENT
- Anna Kholobudovskaya - Intellect-S
- Alexey V Kratiuk - Gorodissky & Partners
- Sergey Lovtsov - Patent & Law Firm YUS LLC
- Dmitry Makarov - Ivanov Makarov & Partners
- Valery Medvedev - Gorodissky & Partners
- Anna Reznichenko - Liapunov & Co
- Natalia Stepanova - Gorodissky & Partners
- Tatiana Tarasova - ARS-PATENT