Expertise/Intellectual Property

Service

Protection of Intellectual Property

A company's rights to trademarks, patents, computer programs and content are reviewed and documented. If they are used without permission, or if the company itself is accused of infringement, the dispute is conducted through negotiations, complaints to platforms and in court.

We are most often instructed by:

  • Companies preparing for a transaction or for raising investment
  • Companies whose materials were created by employees and contractors
  • Rights holders whose goods, brand or content are being copied
  • Companies that have received a letter of claim, a platform complaint or a court claim

The information on this website is provided for information purposes only and does not constitute a public offer.

What the Service Includes

Timing and Fees
–timing on request
from ₽fee on request

Timing and fees are indicative and are confirmed when the engagement is agreed.

01 / Overview
Protecting the asset

The value of a trademark, patent, computer program or content to a business depends on how exclusively the rights holder uses it. If others freely use the same designation or the same materials, the asset no longer distinguishes the company in the market: the rights become harder to license or pledge and more costly to defend in the next dispute.

What is created at a company's expense does not always belong to it. An intellectual property audit answers the question of who the rights holder is in advance – for example, before a letter of claim, before a transaction or before raising investment.

In a dispute over infringement of copyright or trademark rights, the company's ownership of the right is proved by documents on the creation of the work and on the transfer of the right to the company, or by a title of protection.

Failure to respond to an infringement may lead to further infringements: other market participants take their cue from the first infringer.

The method of protection is chosen according to the objective: to stop a specific batch, remove copies from websites and platforms, deter other market participants or obtain compensation. A complaint to a platform may stop the circulation of copies more quickly; a trademark or copyright infringement claim makes it possible to recover compensation and have counterfeit goods seized, but requires evidence and time.

02 / Outcome
Service Outcome
  • Map of the company's rightsA list of the company's intellectual property, indicating the rights holder and any missing documents.
  • Documents on rightsContracts with authors and contractors, documents on employee-created intellectual property and applications to re-register trademarks and patents.
  • Position on the infringementA written assessment of the infringement, the evidence secured, the calculation of compensation and the chosen method of protection.
  • Letters of claim and procedural documentsA letter of claim to the infringer, complaints to platforms, a statement of claim, motions and appeals against court rulings.
  • Position on claims against the companyAn analysis of the grounds relied on by the party making the claim and of the compensation calculation, a reply to the letter of claim, objections and the terms of an agreement.
  • Enforcement materialsDocuments for obtaining a writ of execution and recovering the compensation awarded.

The outcome of the service is the work performed within the scope agreed with the client.

03 / Preparation
What the position is built on

  1. Materials

    The position is built on the documents and the circumstances of the case; the following points are relevant.

    • What the company hasThe names, logos, websites, products and materials it uses.
    • Rights documentsEverything available: titles of protection, contracts, job descriptions of those who create the materials.
    • Claims against the companyA letter of claim, platform complaint or statement of claim received by the company, with attachments.
    • Information on the infringementLinks to listings, websites and posts, samples or photographs of the goods, and details of the seller and supplier, if known.
    • ObjectiveWhat matters most: stopping the circulation of copies, recovering compensation or reaching agreement with the infringer.
    • Data for the calculationPrices and sales volumes of the company's own goods, royalty rates under existing agreements, and known information on the infringer's turnover.

  2. Assessment

    On the basis of the materials, the strengths and weaknesses of the position, the risks and the possible courses of action are identified.

  3. Plan

    For the chosen option, a plan is drawn up: the sequence of steps, timing and scope of work.

04 / Projects
Selected Projects
01 / 04

Acting for the buyer

Intellectual property rights in the acquisition of an equipment and digital solutions manufacturer

Challenge

The buyer was acquiring shares in a foreign company that owned a Russian manufacturer of industrial equipment and digital solutions for equipment management and monitoring, as well as shares in a Russian legal entity. The acquisition of the foreign company was governed by English law.

What was done

The comprehensive legal due diligence of the Russian business covered intellectual property rights, as well as the corporate history, business operations, contractual relationships and other matters material to the transaction. The foreign ownership structure, title to the shares being acquired and the legal aspects of the buyer's entry into the existing corporate structure were analysed separately.

The structure and documents of the transaction were agreed. The findings on the Russian and foreign parts of the structure were reflected in the terms of the transaction and the arrangements for its closing.

Preparing for franchising

Consolidation of rights to a group's accounts, websites and materials before franchising

Challenge

A group of companies was engaged in extensive marketing, but its accounts, websites and rights to the materials created were registered in the names of different entities within the group. To set up franchises later, the rights had to be brought together in the group's management company.

What was done

It was established which group entity held each asset, and the transfer of rights to the management company was documented. The rights to the group's marketing assets were put in order and consolidated in the hands of a single entity.

Trademark dispute

Non-use dispute over a trademark that blocked registration of the client's mark

Challenge

The client needed to register a trademark to brand the services of a travel agency. Registration was blocked by another company's mark: that company used it for a cosmetics brand, but the protection of the mark also extended to a number of Nice classes the client needed.

What was done

Claims for early termination of the legal protection of the mark for non-use were prepared in respect of those classes. The claims were put to the rights holder at the pre-trial stage, and the dispute was settled without going to court.

Purchase of an interest

Review of an app developer's intellectual property rights

Challenge

The buyer was acquiring an interest in a company developing a healthy lifestyle app with a weekly audience of more than 1.5 million users worldwide. Comprehensive legal due diligence of the business being acquired was a key part of the engagement.

What was done

The company's intellectual property rights were analysed, as well as its corporate history, business operations and employment relationships. The due diligence findings were taken into account in structuring the transaction and preparing the contractual documentation.

05 / Questions
Frequently Asked Questions

It is established what follows from the correspondence, invoices and acceptance certificates and who owns the exclusive right under the law. If it has remained with the author or contractor, an assignment agreement is concluded with them. Without this, the company may not be entitled to bring claims against an infringer, and the author may bring claims against the company itself.

The pages containing the copies are recorded together with the date, and documents on the creation of the work and on its ownership by the company are gathered. A letter of claim is sent to the infringer demanding that it stop the use and pay compensation; if the demand is not met, a copyright infringement claim is brought in court.

The infringement is recorded before the platform is contacted, since listings may be removed together with the evidence once a complaint is made. A complaint is sent to the platform with proof of rights and a list of the product listings, a letter of claim is sent to the seller, and if sales continue, a claim is brought in court. A platform that fails to restrict access to the listings after a substantiated notice may be liable for the infringement.

Before replying, it is checked whether the party making the claim holds the rights, whether the use falls within the scope of protection and whether the compensation has been calculated correctly. A reply to the letter of claim is prepared; if the demands are justified, terms for ceasing the use or for payment may be agreed before court proceedings are brought.

An hourly rate, a fixed fee or a combined model is used; in some cases part of the fee depends on the outcome achieved. The fee is determined by the time actually spent, the complexity of the matter and the overall timeframe of the project, and is agreed before work begins.

Key Contacts
Deni Murdalov Deni Murdalov Partner, PhD (Law), LL.M. Anna Tarlakovskaya Anna Tarlakovskaya Partner Andrey Nemov Andrey Nemov Partner

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Other Services in This Practice
Trademarks Brand Transactions Licence Agreements Franchising Assignment of Exclusive Rights Computer Programs and Databases Account Disputes Domain Name Disputes Madrid System Trade Secrets and Know-How Inventions Utility Models Industrial Designs Documents and Consultations

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