Intellectual Property

Belarus

Our employees have in-depth knowledge in the sphere of intellectual property, namely, on the protection of intellectual property (registration of rights to objects, transfer of rights, including in the interests of the residents of the Belarus High-Tech Park).
Our employees have relevant experience in IT, media, Transport, personal data protection, including the issues of building the GDPR-compliant Data protection policy for different companies, including the rules for receiving, processing and storing personal data, cookies.
We have a number of successful projects in that sphere, including the following:
Advising and supporting a well-known Russian brand of fast food restaurants in the process of entering the Belarusian market, including finalizing and coordinating a license agreement for using a complex of intellectual property objects.
Development and support of the signing of the contracts for the assignment of exclusive property rights with project companies, transfer of non-exclusive property rights to project documentation for further refinement or modification by another project company, as well as for re-use.
Preparation of a draft agreement on the development of an audio-visual work with the establishment of a procedure for the transfer of exclusive rights to work for a Belarusian holding company for the production of baby food and drinks.
Advising IT companies on R&D, software development, transfer of copyright, on the issues connected with trademarks, protection of know-how and confidential information and on franchising agreements.
Rendering the following services to IT-companies: provision of legal support in attraction of a new investor, including IP DD, drawing up a partnership agreement.
Legal support of an Austrian data processing company during participation in a tender and conclusion of a contract.
Examination of contracts of a local distributor of power equipment for the presence of IP rights protection from violations by competitors.
Legal support of the operator of a sports center for the protection of intellectual property during the advertising events in the process the organization of international sports events.
Development of a package of documents for web design companies on a wide range of IP-related issues.
Advising an American IT company on the registration of a subsidiary, development of a trade-secret protection system and on the draft of software development agreements; advising on an assignment of software rights.
Examination of new labeling and product names for compliance with the Belarusian law and the TM database.
Consultation of a client on the issues of protection of trademarks and business reputation affected by the video on TV on the issue of product quality.
Legal support for a Belarusian IT company of Israeli origin during the implementation of project on organization of the communication system with a single access point in Belarus.
Legal support of a Belarusian IT startup - a resident of the High-Tech Park, in the process of establishing relations with new investors, including the development of a cooperation agreement, an agreement on the implementation of the rights and obligations of participants (SHA).
Advising a Belarusian subsidiary of a large telecommunications company on the flow of counterfeit products in Belarus and claim work with a numerous online stores selling illegal products under the company's brand.
Provision of legal support to one of the largest and most famous IT companies in Belarus for the preparation of several agreements with a new business partner (client), including the NDA, a license agreement, a master service agreement concluded under English law.

Azerbaijan

Kazakhstan

Trademarks:

Assisting in registering the trademarks of an international investment fund specialising in the development and acquisition of technology used in the oil and gas exploration and production.
Preparing and submitting objection letters to the Board of Appeal regarding the refusal to register a world famous luxury brand of clothing and accessories.
Registration of trademarks of national and foreign banks, educational institutions and large producers of tea and coffee products, as well as other trade brands in various countries worldwide.
Advising a domestic producer of aromatic and phyto oils on the refusal to register a trademark due to confusing similarity with the trademarks of a third party.
Advising the leader in the production of dairy products in the Kazakhstan market on the registration and protection of trademarks in Kazakhstan.
Advising an official distributor of Japanese car brands, original spare parts and accessories in the territory of the Republic of Kazakhstan on the introduction of the “Pop-up” format for authorised distributor dealers in the Republic of Kazakhstan.
Advising on the placement of the logo on baggage packaging at airports, railway and river stations.

International trademark registration:

Successful overcoming of the refusal to register the international trademark of the railway operator with the Patent Office of the Republic of Kazakhstan.
International registration of trademarks for Kazakh bank, national network of clothing stores, national mobile operator, Iranian paint manufacturer, and a chess school.
Advising the leader in the production of dairy products in the Kazakhstan market on the registration and protection of trademarks abroad.
Introducing a license note within an international trademark application owned by an international law firm in the WIPO international register.

Trademarks Search:

Informational search for trademarks for foreign and national companies.
Preparing recommendations based on the results of informational searches for identical and similar trademarks for a Kazakh private airline.

Inventions and Utility Models:

Drafting and filing applications for inventions, industrial designs and utility models patents.
Advising one of the largest energy corporations on compliance with the patent laws of the Republic of Kazakhstan when dealing with fuel containers.
Drafting and submitting complaints, objections and requests associated with patent infringement.
Entering into the national phase for an international Patent Cooperation Treaty (PCT) application.
Advising on patent infringement for a transnational pharmaceutical company.
Registration of an invention patent on behalf Canadian Oil Company.
Advising the client on filing a convention application for granting a patent for an invention with Kazakh Patent Office in accordance with the Paris Convention on the Protection of Industrial Property.
Appealing a claim on the unlawful use of a Eurasian patent by a national producer of locking and sealing devices.
Legal support in obtaining a patent for a computer system owned by an American company providing video services, as well as services in the area of e-commerce and digital advertising with users.
Obtaining a patent for a utility model for a Kazakh engineering and oilfield services Production Company.

Industrial Designs:

Drafting and filing applications for inventions, industrial designs and utility models patents for local and international companies.
Obtaining patents for industrial designs for a local company engaged in the production and bottling of refined oil.
Advisory and further support of the process of obtaining a patent for an industrial design in the Republic of Kazakhstan for one of the large confectionery companies in the CIS.

Patent Researches and Test for Novelty:

Conducting a patent search for local and foreign industrial company.

License Agreements:

Providing legal opinions in connection with analyses of various title documents and other disputed matters, as well as advising on the registration of trademark license agreements for a US energy drinks manufacturer.
Successful registration of the trademark agreement on behalf of a US international fast food chain with the competent authority, as well as successful resolution of requests from the state authority that prevented registration of the agreement.
Advisory and full-range legal support on registration of the trademark license agreement and franchise agreement with the competent authority of the Republic of Kazakhstan on behalf of the digital bulletin board provider.
Drafting of an addendum to the sub-license agreement for the global coffee house brand, in accordance with Kazakh laws, and its further registration with the competent authority.
Review of license agreements for transferring trademark rights to international right holders, including the global manufacturer of automotive components, manufacturer of cosmetic products and clothing, as well as the world-known manufacturer of home accessories.
Advising one of the world leaders in the production of integrated circuits, telecommunications equipment, and household appliances, audio and video devices on the use of IP objects in connection with the distribution, marketing and promotion of goods.

Franchising:

Advising a French retail clothing company on conclusion of a franchise agreement.
Drafting, registration of and further recommendations on franchise agreements for foreign companies, including an American franchisor of retail frozen yoghurt stores, the French clothing retailer, and an international manufacturer of designer clothing.
Advising a foreign leading company on testing, inspection and certification in relation to the registration of an intercorporate complex franchise agreement with the competent authority of the Republic of Kazakhstan, including drafting of the agreement in accordance with Kazakh laws.
Advising international mercantile company (franchisor) whose activity involves design, creation, production and distribution of wedding dresses, cocktail wear, evening gowns and other accessories on conclusion and registration of the franchise agreement with a Kazakh franchisee.
Advising a US franchisor on Kazakh, Uzbek and Kyrgyz law requirements to franchise agreements (on franchised outlets under the brand that deals with restaurant business, specialising in sandwiches).
Review of the franchise agreement on compliance with Kazakh legislation for the international network of fitness clubs.
Review and amendment of a franchise agreement on compliance with the Kazakh legislation for the large American producer of apparel, accessories, and personal care products for men, women and children.
Advising and drafting a franchise agreement for the international company specialising in full range of goods for mothers and babies.
Advising famous European jewellery and accessories brand on the contents of the franchise agreement.
Legal support in the registration of a franchise agreement in relation to the world-known brand of Italian underwear and beachwear with an expert organisation of the Republic of Kazakhstan.

Assignment Agreement:

Registration and administration of assignment agreements for a large Kazakhstani telecommunications operator.
Drafting an agreement on the transfer of rights to a trademark owned by a paint and varnish production company, and registration thereof with a competent authority of the Republic of Kazakhstan.
Drafting of an agreement for the assignment of exclusive rights to trademarks owned by an international legal firm, and registration thereof with an expert organisation of the Republic of Kazakhstan.
Drafting and administration of the agreement for the assignment of a full range of exclusive property and other rights for an online resource (online store) of one of the leading companies in the area of e-commerce in Kazakhstan.

Copyright and Related Rights:

Registration of copyright in computer programs, mobile apps, databases, literature and stage pieces, as well as applied works of national authors.
Registration of copyright of an international investment fund specialising in the development and acquisition of technology used in the oil and gas exploration and production.
Advising a foreign company on the possible infringement of copyrights by using images (people's faces) from the Shutter Stock website for television advertising.
Preparation of the legal opinion for an international manufacturer of musical equipment and other household and audiovisual devices on the legality of requirement to pay remuneration for the free reproduction of phonograms and audiovisual works for personal purposes.
Legal support in the registration of software copyrights for one of the world's largest manufacturers of consumer electronics and household appliances with the competent authority of the Republic of Kazakhstan.
Development of a memorandum for a supplier of equipment and control systems for petroleum stations on royalties payment for using software in the Republic of Kazakhstan.
Development of an agreement for the transfer of exclusive rights to the results of intellectual activity for the representative office of the world's largest American pharmaceutical company.
Legal support in negotiations with a local construction project company and the copyright holder in a dispute over infringement of copyright in software for the electrical systems design.
Drafting of a memorandum for an American media conglomerate engaged in the creation and distribution of movies on the payment of royalties for the use of related rights.
Advising a Russian commercial bank on the claims arising from TV hosts in respect to video content broadcasting.

Company Names:

Successful protection of a company involved hotel business in a dispute relating to illegal use of the trademark and company name.
Successful protection of the national consulting company in disputes on the protection of exclusive rights to the company name.
Successful representation of a non-governmental judicial authority that considers civil disputes between legal entities and individuals in a dispute about violation of exclusive rights to a company name.

Due Diligence and Audit of IP Rights:

Due diligence of the IP rights of a Kazakh mobile operator in the context of its share being placed on the London Stock Exchange.
Due diligence of the IP rights of a leading international logistics company as part of a multijurisdictional M&A transaction for a German company.
Due diligence of intellectual property and information technology for foreign banks, construction companies, telecommunications holding, international engineering company, international investment company, the world's leading manufacturer of food products and household chemicals, and international construction company.
Due diligence of trademarks and drugs certificate for an international pharmaceutical company.

Preventive/Complaint Measures to Protect IP:

Drafting warning letters on behalf of foreign and national companies against IP rights infringers.
Successful pre-trial protection of the exclusive rights of a large foreign manufacturer of chocolate and other confectioneries to the trademarks through sending claims to the infringers.
Participation in the pre-trial recording of violations of the rights to the trademark of a well-known manufacturer of clothing and accessories for men and women as a part of evidence gathering by a notary.

Protection of IP Rights and Fight Against Counterfeit Products:

Advising an international pharmaceutical company on appealing against illegal registration of the trademark of a third party due to confusing similarity.
Successful appeal against registration of the trademark of the world-leading manufacturer of insulation materials in the Appeals Board of the Committee on Intellectual Property Rights.
Advising on trademark invalidation and further protection of the IP rights of a famous confectionary brand, a pharmaceutical company, and manufacturers of industrial goods, soft drinks and automobiles in the Board of Appeal and the courts.
Advising the largest biopharmaceutical company on the violation of its patents for inventions by a potential infringer supplying generics to the territory of the Republic of Kazakhstan.
Advising a Swedish engineering company and drafting of the documents required for the initiation of administrative and criminal investigations in respect of the forgery of the signature and seal of the company, and illegal use of another's trademark.
Success in appealing against the decision of the Appeal Board of the Ministry of Justice of the Republic of Kazakhstan on the invalidity of the trademark registration for the benefit of a Ukrainian pharmaceutical company.
Drafting applications to the customs authorities of the Republic of Kazakhstan to initiate verification of the legality of the sale of counterfeit confectionery products offered for sale by unidentified persons in the territory of the Republic of Kazakhstan within the framework of post-clearance control and further communication with law enforcement agencies.
Development of a petition to the Supreme Court of the Republic of Kazakhstan on the review of judicial acts of the first and appeal instances in favour of the Appeal Board of the Ministry of Justice of the Republic of Kazakhstan on invalidating the registration of a trademark of a Ukrainian pharmaceutical company.

Inclusion of IP Objects into the Customs Register:

Advising a leading multinational manufacturer of various goods on the protection of IP rights at the border.
Preparation of memorandums on protection of trademark rights at the customs border for a leading beauty products manufacturer.
Legal support in the process of entering trademarks of a German manufacturer of door systems and technologies into the customs register of IP objects of the Republic of Kazakhstan along with imposing a consequent ban on the import of goods by third parties.
Advising an international manufacturer of chocolate and coffee products on the legality of a ban on import of goods.

Unfair Competition and False Advertising:

Successful representation of the leading dairy producer in court over the dispute related to copying of the packing exterior.
Drafting and sending warning letters to potential infringers on the violation of the exclusive rights of a large foreign chocolate producer and other confectionery products to trademarks and packaging of goods within unfair competition.

Parallel Import:

Preparing legal opinions for a British oil company regarding parallel import issues.
Co-operating with the state IP Department and customs authorities of Kazakhstan in destroying counterfeit goods at the border as part of the same project.
Successful protection of the representative office of the world-famous brand of luxury jewellery in Kazakhstan in the court on the 'grey/parallel import' case.
Successful protection of the representative office of a foreign confectionery manufacturer on various disputes including the protection of trademark rights, 'grey/parallel import' disputes, and further destruction of the infringing goods.
Advising of the world's largest brewing company on the exhaustion of trademark rights placed on metal KEGs ('parallel/gray imports').
Successful representation of a large American manufacturer of medical equipment in the court in a dispute on the illegal import of a sensor for an ultrasound device into Kazakhstan and bringing the infringer to liability.

IP Litigation and Disputes:

Successful representation of international manufacturers of cosmetic products in protection of the intellectual property rights through detection and making infringers liable.
Successful protection of trademarks of a large foreign FMCG company in the administrative court with further seizure and destruction of infringing goods.
Successful protection of the representative office of the world-largest brewer in Kazakhstan in an administrative court with respect to the violation of exclusive rights to the appellation of origin.
Representing a local manufacturer of locks and locking structures in a dispute against illegal use of the Eurasian patent and invalidation of a Eurasian patent in the territory of the Republic of Kazakhstan.
Successful protection of a foreign pharmaceutical company in the court in a case of violation of exclusive rights to a trademark and recovery of compensation.

Kyrgyzstan

Mongolia

Uzbekistan

Carrying out full scale due diligence of the telecommunications operator and manufacturer of telecommunications equipment. Areas of focus: corporate structure, real estate, judicial proceedings, licenses and authorizations, employment issues, compliance with anti-monopoly rules, compliance with customs regulations, intellectual property issues.
Carrying out full scale due diligence of Angren cement plant. Areas of focus: corporate structure, real estate, judicial proceedings, licenses and authorizations, employment issues, compliance with anti-monopoly rules, compliance with customs regulations, intellectual property issues.
Acting for a leading Chinese construction equipment manufacturer and assisting in drafting and negotiations of a Joint Venture Agreement with the Uzbek Railways on establishment a joint venture on production of modern hydraulic excavators, drafting and negotiating a Trademark and Tradename License Agreement and Technology License agreement.
Representing the leading German pharmaceutical company at Uzbek antitrust authority and economic court against producers and retailers of counterfeit pharmaceutical products in Uzbekistan
Advising the leading French cognac and brandy producer on Uzbek commercial and intellectual property laws, including reviewing and bringing in compliance a distribution agreement with the leading local alcohol importer, producer and retailer.
Representing the leading local distributor of premium imported alcoholic beverages in a dispute with a French prominent champagne producer against actions to restrict importing certain types of alcoholic beverages.
Representing and successfully defending the leading global alcohol producing group of companies in the litigation against takeover of “Stolichnaya” and “Moskovskaya” trademarks by the leading local alcohol importer, producer and retailer. Representing the client at the Agency on Intellectual Property of Uzbekistan.
Representing the largest German construction materials manufacturer at Uzbek antitrust authority, economic court and law enforcement authorities against producers and retailers of counterfeit construction materials in Uzbekistan.
Assisting the largest German construction materials manufacturer on trademark provisional refusal matters.
Drafting a Trademark and Tradename License Agreement and Technology License agreement for the leading Chinese construction equipment manufacturer and assisting in negotiating agreements with the local partner.
Assisting the leading American hotel chain business in drafting a Trademark License Agreement and its consequent registration with the Agency on Intellectual Property of Uzbekistan.
Assisting the leading Serbian pharmaceutical company on trademark assignment, drafting and registration of the assignment of trademarks.
Assisting the leading multinational hygiene products manufacturer on brand protection and generic trademarks matters.

Key contacts

Almaty

Ashgabat

Baku

Bishkek

Chisinau

Dushanbe

Frankfurt on Main

Istanbul

Kiev

Kokshetau

Minsk

Moscow

Nur-Sultan

Rostov-on-Don

Taldykorgan

Tashkent

Ulaanbaatar

Ust-Kamenogorsk

E x p e r i e n c e