KIAP's IP practice represents its clients in Russia's Chamber for Patent Disputes, commercial courts, and courts of general jurisdiction, as well as providing consultation on all intellectual property matters and helping with registration of intellectual property rights in Russia. The practice is recommended by the Legal 500 EMEA and ‘Managing IP - IP Stars (2020)' international ratings, as well as by the Russian ratings, Pravo-300 and "Kommersant". In 2020 the firm's IP practice was recommended for the first time by the World Trademark Review 1000 (WTR 1000) international ranking, with a special reference to Prosecution and Strategy. Clients of the practice include major Russian and international retailers, TMT and IT corporations, oil & gas, manufacturing and pharmaceutical companies.
Disputes involving intellectual property:
- Representation in the Patents Disputes Chamber, Arbitration tribunals, and General Jurisdiction Courts
- Trademarks and service marks, domain and patent issues
- Defense of copyright and related rights including those on the World-Wide Web
- Agreements related to the creation and use of intellectual property (licensing, franchising and comissioning agreements)
- Unfair competition cases, representation at the Federal Antimonopoly Service
- Advertising law issues
Consultations in intellectual property issues:
- Legal audit of intellectual property, for example, for the purpose of investment
- Consulting on any aspect of intellectual property securitization
- Advising on contracts for the disposal of rights of intellectual property objects: advising on copyright contracts and commissioning contracts, including contracts on development of trademarks and software, contracts for the transfer of know-how and confidential information
- Development and analysis of distributor agreements, service agreements, agents and related contracts related to defense of intellectual property, software, personal data and confidential information
- Advising on the development of local legal acts for the transfer of rights of intellectual property from an employee to an employer
Registration of intellectual property rights:
- Registration, defense and keeping in force of trademarks and patents, services on inventions, utility models, and industrial designs patenting in Russia and abroad
- Trademarks audit for identity and similarity, patent search and expert appraisal
- Entering of trademarks into the intellectual property customs registry
- Software and domain names registration, documents preparation, consulting.
- Maintaining a patent portfolio for one of the largest manufacturers of telecommunications equipment, audio and video devices during the patenting of inventions in the Russian Federation.
- Consulting a leading international marketing agency on a wide range of issues related to the acquisition, disposal, and audit of IP assets, usage of intellectual property for incentive events and loyalty programs, and personal data processing.
- Successful representation of interests for a major French manufacturer of household appliances in the case over the termination of the legal protection of a trademark in the Intellectual Property Court.
- Defending a major international air carrier in the case over the violation of exclusive rights to a trademark in a customs authority, as well as subsequent representation in court.
- Comprehensive maintenance of an IP portfolio for a group of cosmetic companies, including registration of assets in most foreign countries.
- Representing a major Russian agro-industrial company in a meeting of the Expert Council on Unfair Competition of the Russian Federal Antimonopoly Service and subsequent protection of its interests in a case over goods appearance imitation initiated as a result of the said Council meeting.
- Representation of a German hypermarket chain in a dispute connected with violation of exclusive rights to series of trademarks by a large Russian shopping and entertainment center including use of the internet.
- Advising a Russian bank on its rebranding in connection with the formation of joint venture with a public institution and development of a unique scheme of obtaining exclusive rights to IP-assets after the completion of the transaction. Subsequently provided advice on the management of the client’s IP portfolio and advice on various matters concerning intellectual rights.
- Advising on a transaction relating to the formation of a joint venture with a large manufacturer of tankers in disposal of part of its rights to know-how.
- Assisting of a big Russian confectionary company in prevention of unfair competition from another rival confectionary company, which used packaging similar to client's packaging protected by a design patent, including provision of all evidence proving violation, developing a legal position and representation before the Federal Antimonopoly Service.
- Advising an international luxury manufacturer on matters relating to intellectual rights protection, including support of transactions connected with intellectual rights granted to a Russian distributor for setting up and conducting of business on the territory of Russian Federation.
- Full-service IP protection of one of the world's most up-and-coming jewelry brands starting from registration procedures up to representation of the client before the court and the Customs in various cases relating to protection of IP rights; cooperation with police officers regarding prevention of selling counterfeit goods.
- Advising a large international pharmaceutical company on the application of an agreement with a competing company for the disposal of rights on intellectual property (know-how, patents, trademarks) during importation and manufacture of pharmaceutical preparations protected by the above-described IPO.
- Advising a large fashion house on the matters connected with protection of rights on design of accessories, clothes and other luxury items.
- Representation of a global manufacturer of house appliances in a case on cancellation of the client’s trademark due to non-use. The result was that the trademark remained valid.
- Representation of an international manufacturer of construction materials in the Chamber of Patent Disputes against a grant of a Russian patent on utility model in the name of a competitor. The complexity of the dispute was that the patent had already been challenged and was partially invalidated. As a result, a decision was made to declare the disputed patent totally invalid.