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IP EXPERTISE in CIS

Protection of intellectual property rights in Post-Soviet states (Azerbaijan, Georgia, Kazakhstan, Tajikistan, Uzbekistan, Turkmenistan, Kyrgyzstan, Russia, Ukraine, Belarus, Moldova, Latvia, Estonia, Lithuania).

Please see below information about our recent experience in the region.

Tajikistan
– Handling trademark portfolio of the leading pharmaceutical products and medical devices producer in Asia & Australia and advising on pre-filing strategy; providing all necessary advice on post-filing procedure related to use/non-use claims by third parties;
– Drafting written arguments, appearing at the Board of Appeal as well as advising a leading US provider of manufacturing software products on all aspects related to overcoming provisional refusal against the client’s international trademark applications in Tajikistan;
– Conducting trademark search and providing legal opinion on perspectives of trademark registration as well as legal risks associated with conflicting trademarks.

Turkmenistan
– Handling trademark portfolio of the leading Indonesian food producers in Turkmenistan; Advising on trademark licensing and related legal issues;
– Representing interests of the leading world pharmaceutical producers on assignment deal as well as advising on other related IP matters; drafting written arguments and filing an appeal claim to the Board of Appeal against provisional refusal issued by the Turkmenistani Patent Office;
– Advising the leading Asian food producers on protection against infringement caused by unfair competitor.

Kyrgyzstan
– Advising the leading Asian coffee producer on IP filing strategy and due diligence. Conducting pre-filing clearance searches; advising on the appropriate goods and services covered by the application; recommending the jurisdictions in which protection should be sought;
– Advising Asian tyre manufacturer on infringement and validity of its trademarks in Kyrgyzstan; using our experience in the industry, advising the client on post-registration matters such as recordal of assignments, licenses, renewals and maintenance of registrations.

Uzbekistan
– Advising one of the leading South African gold producers on pre-launch clearance searches, filing strategy, overcoming objections and successfully prosecuting trademark applications through to registration;
– Filling and following renewals for trademark registrations;
– Advising on litigation related to trademark infringements and trademark oppositions.

Ukraine
– Advising the leading manufacturing firm on overcoming provisional refusal issued by the National Patent Office; drafting written arguments, collecting evidence as well as advising client on the best winning strategy;
– Conducting trademark search and advising on pre-filing strategy;
– Providing market-watching services; detecting trademark applications in conflict with our clients’ trademarks; preparing and filing oppositions to such detected trademark applications;
– Negotiating and obtaining withdrawal of oppositions filed by third parties against our clients’ trademark applications.

Belarus
– Settling dispute between the leading IT&Communication producers related to assignment of trademark;
– Handling trademark portfolio of the world’s leading mining producer in Belarus; conducting pre-filing trademark clearance searches, advising on brand strategy as well as trademark renewal and assignment issues.

Moldova
– Representing world’s leading manufacturer of camera and optics-related equipment in Moldova and advising on trademark registration issues, conducting market-watching services;
– Advising on trademark filing, maintenance, and protection strategies.

Russia
– Advising the leading Russian manufacturer on anti-counterfeiting measures and trademark enforcement in multiple jurisdictions including Russia;
– Advising the leading Russian food producer on trademark enforcement and protection against the sale of counterfeit goods;
– Advising international trademark owner on registering and maintaining trademarks in Russia;
– Assisting one of the leading European pharmaceutical producer on patent protection issues in Russia;
– Conducting trademark search and advising on the best brand strategy.

Azerbaijan
– Providing assistance in tackling counterfeiting and piracy problems and enforcing clients’ IP rights in Azerbaijan;
– Drafting Cease and Decease Letters and collecting evidence;
– Advising on registration of trademarks at Azerbaijani Customs’ Trademark Registry;
– Advising US tech company on patent protection in Azerbaijan; drafting and filing Azerbaijani National Phase Patent applications based on prior PCT and US patent applications;
– Advising on trademark registration, trademark renewal and assignments;
– Handling trademark portfolio of High End fashion brands as well as advising on brand protection in Azerbaijan.

Kazakhstan
– Handling trademark portfolio of one the biggest Asian pharmaceutical producer and advising on maintenance and enforcement strategy;
– Coordination with law enforcement authorities on proceedings taken against the infringers of clients’ intellectual property rights in Kazakhstan;
– Drafting, registering and advising on trademark assignment agreements as well as other related issues.

Estonia
– Advising the leading Russian beverage & alcohol producer on the best strategy of overcoming grounds of provisional refusal issued by the Estonian Patent Office against registration of the client’s trademark in Estonia; collecting evidence and filing a response against provisional refusal to the Estonian Patent Office; advising the client on opportunities and potential risks of bringing a court action against the infringer, drafting and submitting a court action to the Estonian Court which led to the positive decision in our client’s favour.
– Advising on trademark protection issues related to post-registration stage; assisting clients on registering trademarks at the national Customs Registry of Trademarks; negotiating and drafting the amicable agreements for the termination and compensation for intellectual property infringement.

Latvia
– Conducting clearance searches, advising clients on selecting, registering, enforcing and defending trademarks;
– Providing market-watching services to prevent infringement of our clients’ trademark rights;
– Advising on anti-counterfeiting issues: coordinating with Latvian Customs to help clients minimize the trafficking of counterfeit goods.

Lithuania
– Advising the leading regional alcohol&beverages producer on protection of its intellectual property rights against the infringers as well as preparing a strategy of overcoming potential litigation claims related to non-use trademark actions in Lithuania; drafting written arguments against the claim filed by the infringers; representing the client and drafting dispute settlement agreement signed between the parties;
– Advising the leading fashion brand producers on protection measures against the infringers; Monitoring marketplace and advising on maintenance, post-registration procedures and trademark renewal;
– Representing clients in connection with trademark opposition and cancellation proceedings before the Trademark Appeal Board.

Georgia

– Handling of PBR portfolio of the leading US grower in Georgia;

-Advising the leading Indian tea producer on IP filing strategy. Conducting pre-filing clearance searches; advising on the appropriate goods and services covered by the application; conducting market search;

-Successfully representing leading Finnish producer to overcome provisional refusal in Georgia against international application filed through the WIPO’s Madrid System.