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IP Strategic Counselling

Our IP team supports our foreign and Russian clients on the following issues:


• IP portfolio management and advice

 

• IP registration and maintenance

 

• Analysis of infringements and advising on the IP protection strategies

 

• Acquisition and transfer of IP rights


In particular, our lawyers have advised clients on the following IP-related matters*.


  • Representing a major Russian bank in disputes over infringement of exclusive rights to ATM software considered by the US and Russian courts (the amount of the dispute is approximately $90 million)

  • Representing a German car manufacturer and Germany’s largest retailer of household appliances in domain disputes before Russian courts

  • Advising a US-based multinational company, one of the Big Five tech companies investing in search engines and services, cloud computing and advertising technologies, on user support issues and its communications with government agencies, legal entities and individuals in connection with various IP infringements

  • Representing a major US manufacturer of construction and mining equipment in a number of civil and criminal cases in connection with illegal production and sale of counterfeit goods CIS-wide; handling numerous administrative proceedings to prevent brand dilution and eliminate counterfeit products and illegal production facilities in Russia

  • Representing a German manufacturer of floors in patent priority disputes against a Russian patent squatter in Russian courts

  • Representing Russian screenplay writers in connection with literal piracy and infringement of author rights to a screenplay during the filming and distribution of a motion picture in Russia

  • Advising an international pharmaceutical company on appealing the registration of a generic flagship drug and invalidation of a patent in a dispute with a potential claim for an amount in excess of RUB5 bln

  • Advising and representing in court and before governmental agencies the world’s largest US-based toy company in connection with various copyright and trademark infringements, anti-counterfeiting and copying of the owner’s well-known brands in Russia and CIS-wide

  • Handling various IP infringement cases (online and offline) for LEGO Group, representing before Russian customs, police, antimonopoly authorities, handle administrative, criminal court proceedings, advising on trademark and copyright customs recordals, advising on regulatory issues in Russia, domain name infringement issues, etc.

  • Arranging customs recordals in Russia, Belarus and Kazakhstan for a Japanese multinational electronics and electrical equipment company and handling various anti-counterfeiting and parallel import matters; advising company on personal data protection aspects

  • Assisting a Swedish multinational retail-clothing company with licensing work and maintaining trademark customs recordals; handling anti-counterfeiting work in Russia and other CIS countries

  • Advising a French independent pharmaceutical company on anti-counterfeiting and parallel import issues, advise on customs protection

  • Advising a British multinational healthcare company on customs protection issues in Russia

  • Representing a US-based online auction and e-commerce corporation in a dispute with its client arising from poor quality of services and the relevant financial claims being raised against the corporation; the outcome of the proceedings was that a confidential settlement was agreed

  • Representing an American corporation which designs and manufactures advanced cutting systems such as plasma cutting machinery and related high-technology industrial applications for specific use before the Russian customs and advising on trademark customs recordals issues

  • Advising a European company which distributes innovative and high-quality valves and fittings for potable water and sewage pipe systems on customs recordals in Russia and anti-counterfeiting work

  • Advising Etalon Group, one of the Russia’s top 10 major developers, in connection with the acquisition of a 35% shareholding in QB Technology, a UK-based innovative construction company and acquiring a set of IP rights in order to establish a similar hi-tech construction project in Russia

  • Registration of trademark portfolio in Russia and international recordals for "Secure Information Zone" company (BIZON, LLC), advising on claims work

  • Arranging trademark customs recordals for the world-famous French alcohol brands


    *This includes experience of our team members prior to joining RGD.

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