Alifax is the Italian company producing innovative medical diagnostic equipment. Alifax has its subsidiaries in Spain, China, Brazil, Germany and in Russia as well. The distribution network of this company involves more than 100 countries around the world.
To ensure safe and reliable operation of its diagnostic equipment, Alifax provides to its customers special smart cards. While most supplies of these cards follow up verified B2B chains, two years ago Alifax started facing issues relating to parallel import and counterfeit products. Patentica’s lawyers investigated this matter and filed lawsuits against several major infringers in the Russian market.
The defendants tried various tactics throughout the hearings, raising doubts about the very association between the equipment and smart cards to prove that these cards are simply out of the legal protection scope.
Eventually, Patentica’s legal team justified all the key aspects of the case, including the homogeneity of the smart cards and the equipment they are intended for from the perspective of an average consumer. All imposed legal collisions were successfully resolved.
As a result, Patentica proved both the fact of the trademark rights infringement and the guilt of the defendants. The court awarded Alifax with a fair compensation of ca. 765 000 RUB.
On December 16, 2021, the State Duma adopted the Law on the accession of the Russian Federation to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications.
While the Agreement was originally introduced in 1958 and entered into force in 1966, only 30 member countries have joined it so far. Through these years the Agreement have undergone several revisions, the last one being Geneva Act of 2015, allowing for registration of geographic designations’ and participation of intergovernmental organizations.
It is hoped and expected that the Russian membership in the Lisbon Agreement shall advance the protection of regional brands supporting further development of local and foreign manufacturers, as well as strengthen the Russian integration within the global IP system.
We at PATENTICA will be happy to answer any further questions you may have on this or other news and insights published on our website. Please feel free to contact us for more details at info@patentica.com
Epoch Company is widely known as toy manufacturer from Japan. The famous “Sylvanian Families” toy characters are beloved, recognized and sold all over the world. No surprise that more and more rivals produce and sell similar toys.
In many parts of the world the huge popularity of “Sylvanian Families” invoked the production and sale of counterfeit goods by mala fide competitors. Similarly, several years ago, counterfeit toys produced in China and the USA appeared in the Russian market.
Recently, Epoch Company won one of the most long lasting and complex cases. After almost five years of legal proceedings, thanks to the excellent litigation work and professional perseverance of Patentica’s lawyers, the Supreme Court of Russia was convinced to secure Epoch’s victory in this litigation. Patentica protected Epoch’s interests via claiming compensations for the infringements of its exclusive rights on toys’ designs.
Many complicated questions became subjects of robust discussions in the court. For example, the plaintiff was forced to prove the originality of toys’ designs in comparison with “Maple Town” anime series characters. Besides, the defendants tried to protect themselves with the help of patents of the People’s Republic of China for industrial designs.
Patentica confirmed both originality and the very fact of creative work to be the background for the copyright protection causation for Epoch and its “Sylvanian Families”. Finally, Epoch won the case and all three defendants were obliged to pay compensation.
On November 22, 2021, the Eurasian Patent Office (EAPO) and World Intellectual Property Organization (WIPO) signed the agreement according to which the EAPO can act as the International Searching Authority (ISA) and the International Preliminary Examining Authority (IPEA) under the PCT. The agreement will enter into force at a later date after completing necessary formality preparations by the patent office.
On October 18, 2021, the Government of the Russian Federation approved the methodology developed by the Federal Antimonopoly Service for calculating the amount of compensation payable to a Russian patent owner for producing generic medicines intended for export to other countries in accordance with the Article 1360.1 of the Civil Code without the patent owner’s consent. The corresponding government decree No 1767 entered into force on October 28, 2021.
According to Article 1360.1 of the Civil Code the Russian Government may allow to use a patented invention for the production of a medicinal product by any party for export purposes under certain specific circumstances without the consent of the patent owner with the requirement of immediate notification of the patent owner and payment of the proportionate compensation for such a use, as we informed earlier here.
The amount of compensation is 0.5% of the manufacturer’s actual revenue, which has exercised the right to use an invention, utility model or industrial design without the consent of the patent owner. The compensation is supposed to be annually paid during the period of validity of the corresponding government decision.
To date, no such authorization has been issued. We will follow up on the development of practice on this matter.
Should you have any questions in this regard or need additional information please do not hesitate to contact PATENTICA’s patent attorneys at info@patentica.com.
In the brand new issue of The Patent Lawyer Magazine: An overview of the Eurasian design patent system. Vasily Andreev and Victor Lisovenko, Attorneys at PATENTICA, summarise the filing, examination, and opposition stages of the Eurasian design patent system.
Read the full article here for free: https://lnkd.in/dpYYCYca
PATENTICA ‘s lawyers successfully defended the interests of the toys manufacturer EPOCH COMPANY, LTD (Japan) in a dispute with a group of companies (importer Ababika LLC, toys wholesaler TNG LLC and administrator of online stores SP Zolnikov), on violation of copyright exclusive rights to “Sylvanian Families” (www.sylvanianfamilies.com) toy design.
The Intellectual Property Court, in cassation, ended a lengthy dispute and upheld the Ninth Arbitration Court of Appeal ruling to recover compensation for the defendants’ illegal distribution of Chinese counterfeit “Happy Friends” toys which the court found to be created using the images of characters designed by the Japanese company Epoch in view of the arguments presented by PATENTICA (www.patentica.com).
The proceedings took more than 4 years, going through several rounds in the first, appeal and cassation instances. In the first round, the courts of first and appeal instance sided with the defendant and refused to satisfy the claim due to the lack of registration of toys as industrial designs, the lack of proof of the sale of the disputed toys due to the formal discrepancy between the addresses of the defendants, and the impossibility of determining the proper defendant. However, the joint efforts of the designers of Epoch and Patentica lawyers Elena Dmitrenko and Alexander Tymofeev resulted in the victorious decision establishing the authorship rights of the original desiners of Sylvanian Families, so much loved by kids all over the world.
The Intellectual Property Court of the Russian Federation has completely revised the judicial acts of the first and the appellate instance and confirmed the erroneousness of the conclusions, recognizing the plaintiff’s right to choose the method of protecting the design of toys by copyright (and not just industrial designs), that the EPOCH COMPANY, LTD unambiguously has copyright for design of the toys, the right to recover compensation and the inadmissibility of excluding lawfully obtained evidence during the acquisition of counterfeit toys, such as till slip and invoices of online stores, when determining the fact of violation.
For more details, see https://kad.arbitr.ru/Card/da823344-1b49-4fea-93a9-aac3778c2fbb
“Control and efficiency”.
Olga’s key to success are sociability, responsibility and an organised nature. Fluent in English, Olga is always glad to communicate with clients and assist her colleagues with arranging meetings, conferences and other events.
A fan of serenity of libraries, Olga loves to read and explore the worlds of different authors. She also loves nature, long strolls around Moscow, deep conversations and 5 o’clock English tea.
Expertise
Administrative and economic activities
Paperwork
Event planning
“Never ever give up!”
Ludmila’s politeness, accuracy, friendliness, reliability, experience, openness to new knowledge make her a perfect assistant, in whose hands all submissions are safe.
A journalist in the past, Ludmila keeps her interest in literature and poetry. She loves nature, brain teasers, merry gatherings with her family and friends and cooking.
Expertise
Preparing and submitting correspondence
Working with correspondence
“A journey of a thousand miles begins with a single step”.
Oleg has a unique first-hand experience at aircraft engineering, which has laid solid grounds for sharp analytical approach to inventions in mechanics and instrument engineering. Apart from technical skills, Oleg also speaks Chinese and has a profound knowledge of Asian cultures. A mixture of humanitarian and technical insights enable Oleg to see unexpected and original solutions, which others cannot master.
Expertise
Prosecution of patent applications
Preparing documents for PPH
Checking of patent application translations
Technical areas
Mechanics
Optics
Optoelectronics
Instrument engineering
“It always seems impossible until it’s done”.
Ekaterina has solid experience in prosecuting applications and providing various types of patent searches and opinions relating to a wide range of life sciences, with a major being in the field of microbiology, immunology and genetic engineering.
Ekaterina has also obtained the diploma of a specialist in professional translation from the Department Translation and Translation Science.
Expertise
Patent drafting and prosecution
Patent searches (prior art searches, freedom-to-operate, patentability, invalidity, etc)
Freedom-to-operate, non-infringement and other types of opinions
Patent litigation
Technical areas
Biotechnology
Medicine
Pharmaceutics
Genetic engineering
Chemical engineering
“Knowledge is like water – it borrows the shape of the container it occupies”.
Irina is a patent attorney with technical expertise across different fields of optic, information and mechanic technologies and particular focus on information technology, software and telecommunications. With more than ten years of intellectual property experience, Irina has gained extensive experience in patent search, application drafting and prosecution of computer-implemented inventions. Her experience includes consulting a wide range of clients, from startups to large corporations, and she uses her knowledge in IP assets valuation to meet each client’s needs. She easily deals with complex objects involving artificial intelligence and data processing and concentrates her best efforts on bypassing the obstacles that the computer-implemented inventions may face. The combination of Irina’s legal and technical background makes her a considerate adviser for IT clients in developing and managing intellectual property portfolios.
Before developing her legal career, she took positions of a research engineer and a QС engineer in an analytical equipment manufacturer, where she solved various problems relating to sensor signal processing and data analysis.
Irina quickly gets right down to the specifics and can dig deep to represent the client’s position in the best possible way keeping up to the deadlines.
Expertise
Patent drafting and prosecution
PCT Entry
Patent searches (prior art searches, freedom-to-operate, etc)
Technical areas
Optics
Electronics
IT& computer systems
AI applications
Navigation
Satellite Systems
Medtech
