A Zalesov & Partners Patent & Law Firm

WTR Research

The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal trademark expertise.

Bronze - Firms: prosecution and strategy

Silver - Firms: enforcement and litigation

In recent years, A Zalesov & Partners has become one of the best-known boutiques in Russia and has featured in many of the country’s highest-profile cases on both the soft IP and patent sides. Despite the economic challenges of the last two years, the “straightforward, strategic and cost-sensitive” group has continued to evolve: “A Zalesov has a proactive and progressive team of IP specialists, which is constantly developing in professional competence.” Large-scale portfolio management and the implementation of robust anti-counterfeiting measures are further fortes. One significant client in the latter area is Teva Pharmaceuticals, whose Sudocrem brand the firm has lately been protecting. Taking care of this is Irina Ozolina, a dual-qualified attorney at law and trademark and design attorney who has been practising on both sides of the contentious/non-contentious divide since 2003. A familiar face at venues including the Russian Supreme Court and the Federal Anti-monopoly Service, she is known for her sharp analytical mind. Working shoulder to shoulder with her is name partner Aleksey Zalesov, a “dynamic and experienced team leader, a superb litigator and not only a leading IP professional, but also a business-oriented entrepreneur”. Since 2003, he has duked it out in more than 250 separate IP disputes. Heading up the trademark group – and entering the WTR 1000 rankings this year – is Anastasia Kiriukhina, a prolific filer and a supremely capable plate-spinner for whom the Federal Service for Intellectual Property (Rospatent) is a second home. She recently overcame a provisional refusal on behalf of biotechnology company Devicare.

Firm Profile

A Zalesov & Partners is a full-service IP law firm that provides IP advice and handles the prosecution of patents, designs and trademarks before the Russian Patent and Trademark Office and the Eurasian Patent Office, as well as the litigation of these rights before the Russian courts and administrative bodies.

Team

The firm is home to 31 professionals, including 14 patent and trademark attorneys and 14 IP lawyers. The firm’s IP law and enforcement group, the trademark prosecution group and the patent prosecution department are strong, reliable and responsive; the latter group is further divided into a life sciences group, an IT and electronics group, and a mechanics and applied science group.

Practices

With the team members accumulating years of experience in patent and trademark disputes across various industries in Russia and abroad, the firm can give verified practical advice on patent and trademark protection and enforcement strategies.

The team efficiently handles patent and trademark prosecution, and patent and trademark validity disputes.

Each year sees the firm add to its track record of successes. The firm has obtained decisions and rulings that:

  • recognise that the general approach of the Russian Patent and Trademark Office to disclaim numbers should not be automatically applied to a combination of numbers that has meaning and creates associations for consumers (eg, 911 for the goods of Class 03 should not be disclaimed in a trademark);
  • facilitated the settlement of a dispute between the owners of two conflicting rights to ‘Baikal’: a trademark and designation of the place of origin used by the firm’s client, the producer of still water extracted from the depth of Lake Baikal using a unique patented technology;
  • implement the doctrine of ‘one source of goods origin’ into the practice of the Patent and Trademark Office in the context of acknowledging the well-known status of a trademark;
  • recognise that the burden of proof is spread between the Patent and Trademark Office and the applicant in disputes relating to the prosecution of 3D trademarks;
  • upheld the counterclaims of international insurance company Allianz (which the firm represented) against a competitor’s attempt to take away its widely known ROSNO trademark;
  • held that a semantic difference can be enough to avoid confusion between two marks only if one of them is a very well-known surname and the other is a toponym with roots in famous historical events;
  • considered the legal consequences of wrong priority claims in an insulin glargine patent invalidation dispute; and
  • highlighted the legal consequences of presenting non-reliable examples in a patent invalidation case based on non-inventiveness of a patent on a ‘new’ crystal form of the known competitor’s substance.

The firm has also secured several rulings that contribute to the implementation of the doctrine of equivalences in patent infringement disputes.

The team provides efficient IP enforcement and anti-counterfeiting services in Russia; it has successfully handled numerous court cases in different regions of the country, coordinated customs border measures and represented clients before unfair competition bodies.

Special features

The firm’s professionals have vast experience in IP law, combining IP litigation and prosecution services into one seamless package.

Client information is protected by all possible legal and technical means, including the status of our attorneys at law, which protects all client-attorney communication from disclosure requests.

The firm’s partners are frequent speakers at IP events in Russia and contributors to Russian and international publications and news outlets. Founder Aleksey Zalesov is a member of several consulting boards for governmental bodies, which enables the team to remain abreast of all legislative developments and be instrumental in forming them.

A Zalesov & Partners’ professionals are active members of the Russian Chamber of Patent Attorneys and the International Association for the Protection of Intellectual Property (AIPPI), INTA, the Licensing Executives Society and the International Federation of Intellectual Property Attorneys. Dr Zalesov serves as vice president of the Russian Chamber of Patent Attorneys and vice president of the Russian National Group of AIPPI, while senior partner Irina Ozolina serves as secretary of the AIPPI Russian National Group.
 

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