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.

Silver - Firms: enforcement and litigation

Bronze - Firms: prosecution and strategy

Litigation-focused A Zalesov & Partners “is very service oriented and flexible in adapting its work and costs according to specific client needs. In the context of negotiations, the team strikes the right balance, being firm but compromising”. The group has lately fought a number of key battles and set precedents – one particular highlight being a successful appeal of a Rospatent refusal to acknowledge Ferrero Group’s RAFAELLO trademark as well known. Highly adept at administrative and civil judicial trademark infringement litigation, the set also has a singular facility for anti-counterfeiting, orchestrating major raids and seizures. Eponymous founder Aleksey Zalesov has been an IP mover and shaker for more than 25 years and consistently draws positive feedback: “Straightforward, uncomplicated, reliable and swift, he’s excellent to work with.” Similarly talented senior partner Irina Ozolina is “a reliable expert in trademark law and unfair competition and an experienced hand at managing delicate and complicated issues before the trademark office and the courts. Extremely cooperative and helpful, she gives precise suggestions and quick but complete answers”.

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 (PTO) and the Eurasian Patent Office, and the litigation of these rights before the Russian courts and administrative bodies.

Team

The firm is home to 27 professionals, including 13 patent and trademark attorneys and 10 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

Years of experience handling patent and trademark disputes in various industries in Russia and abroad mean that the firm can give verified, practical advice on patent and trademark protection and enforcement strategy.

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

Every year the firm adds to its track record of successful outcomes. The firm thus recently obtained decisions and rulings that:

  • implement the doctrine of ‘one source of goods origin’ into the practice of the PTO in the context of acknowledging the well-known status of a trademark;
  • recognise that the burden of proof is spread between the PTO and the applicant in disputes relating to the prosecution of 3D trademarks;
  • upheld the counterclaims of major 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 be fully abreast of all legislative developments and participate 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 Irina Ozolina serves as secretary of the Russian National Group of AIPPI.

Developments

The firm moved in 2020 to new, spacious and beautiful offices on the firm’s own estate, enabling the recruitment of new professionals into the team.

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