Alexey Ivanov

Attorney at Law, Partner

Phone: +7 903 1032298
E-mail: This email address is being protected from spambots. You need JavaScript enabled to view it.
Languages: Russian, English



Practice areas

IP Litigation
IP Due Diligence
Unfair competition

Professional experience

Alexey Ivanov is a partner and co-founder of the law firm “Ivanov, Makarov & Partners”. He started his career as an assistant attorney and worked in major Moscow legal firms. In 2005 he became an advocate and a member of the Moscow Bar. Alexey focuses on commercial litigation and has extensive experience with legal issues related to trademarks, patents, copyright, unfair competition and Internet law. He is skilled in due diligence review and analysis for mergers and acquisitions of trademark, copyright and domain name portfolios. Alexey combines his attorney practice with work at the Civil and Labor Law Department of the People's Friendship University of Russia (Moscow). He gives lectures on Protection of IP Rights and conducts workshops on International Private Law. Alexey spends significant amount of time monitoring and analysing legislative developments.

Education

The People's Friendship University of Russia (Moscow) - Doctor of Law, 2004
The People's Friendship University of Russia (Moscow) - Master of Law, 2001, cum laude
The People's Friendship University of Russia (Moscow) - Bachelor of Law, 1999

Achievements

March 2005 - Qualification as an Advocate
Member of the Moscow Bar, Russia

Notable Representations

Burger King Corp. vs. Talco Aktiengesellschaft (case No. A40-160021/09-27-1137). Represented Plaintiff in trademark action relating to RU domain name. Case resulted in favor of Plaintiff (2010).

Forbes Media LLC vs. OOO “Landmark VIP Service” (case No. A40-100094/09-110-663). Represented Plaintiff in trademark action relating to RU domain name. Case settled by amicable agreement (2010).

Koninklijke Philips Electronics N.V. vs. OOO “Repli Master” (case No. А40-135063/09-39-950). Represented Plaintiff in action relating to Defendant’s breach of license agreement. Case resulted in favor of Plaintiff (2010).

bauMax AG vs. OOO "PromTorg" (case No. А40-16596/09-93-178). Represented Plaintiff in trademark action relating to RU domain name. Case resulted in favor of Plaintiff (2009)

B.O.R.K. Elektronik GmbH vs. OOO "Eldorado" (case No. А40-71303/08-5-670). Represented Plaintiff in trademark action relating to consumer electronics. Case settled by amicable agreement (2009).

Bloomberg Finance L.P. vs. Burakov A.V. (case no. А40-40655/09-67-371). Represented Plaintiff in trademark action relating to SU domain name. Case settled by amicable agreement (2009).

Shiseido Co., Ltd. vs. Ivanova Yu.I. (case no. А40-58822/09-26-514). Represented Plaintiff in trademark action relating to RU domain name. Case settled by amicable agreement (2009).

Cesab Carrelli Elevatoti S.p.A. vs. Cherkasov V.A. (case no. А40-13688/08-110-27). Represented Plaintiff in trademark action relating to RU domain name. Case resulted in favor of Plaintiff (2008-2009).

OOO "Tehnotroniks" vs. Federal Antimonopoly Service (case no. A50-6389/2009). Represented Plaintiff in action against FAS decision on cancellation of trademark registration. Case resulted in reversing FAS decision and retrieving trademark registration (2008-2009).

OOO "Diamant Alko" vs. OOO "Yekaterinburg Alcoholic Beverage Factory" (case no. А40-24175/07-51-99). Represented Plaintiff in trademark action relating to alcoholic beverages. Case resulted in favor of Plaintiff (2008).

Salomon S.A. vs. OOO "Elva Sport" (case no. A40-10511/07-67-113). Represented Plaintiff in copyright action relating to ski binding. Case resulted in favor of Plaintiff (2008).

Century 21 Real Estate LLC vs. OOO “Twenty First Century” (case no. А66-6289/2007). Represented Plaintiff in trademark action relating to RU domain name. Case settled by amicable agreement (2007-2008).

OOO “Intermoda” vs. Chamber for Patent Disputes, third party Consitex S.A. (case no. Дело № А40-54/07-93-1). Supported decision of Chamber of Patent Disputes on invalidation of Plaintiff’s trademark on behalf of Third Party. Case resulted in decision favorable for Third Party (2007-2008).

LeCroy Corporation vs. Afonsky S.A. (case no. А40-11715/07-93-125). Represented Plaintiff in trademark action relating to RU domain name and consumer electronics. Case resulted in favor of Plaintiff (2007-2008).

Sweet Life AG vs. Rospatent (case no. А40-45223/07-26-311). Represented Plaintiff in action against decision of Trademark Office on cancellation of trademark registration. Case resulted in reversing of the decision of Trademark Office and retrieving trademark registration (2007-2008).

Association Radio Maria vs. OOO "Maria" (case no. А28-1833/07-44/17). Represented Plaintiff in trademark action relating to NET domain name and radio broadcasting. Case settled by amicable agreement (2007).

Salomon S.A. vs. OOO "SK KANT" (case no. A40-25815/05-110-209). Represented Plaintiff in trademark action relating to ski binding. Case settled by amicable agreement (2006-2007).

OOO "Goryachiye Tury" vs. Rospatent (case no. А40-5594/06-26-59). Represented Plaintiff in action against decision of Trademark Office on cancellation of trademark registration. Case resulted in reversing of the decision of Trademark Office and retrieving trademark registration (2006).

Scott Fetzer Company vs. Kogut S.V. (case no. А40-85411/05-26-577). Represented Plaintiff in trademark action relating to RU domain name. Case resulted in favor of Plaintiff (2006).

Unilever N.V. vs. OOO "Sostra" (case no. А41-3601/06). Represented Plaintiff in trademark action relating to foodstuffs. Case settled by amicable agreement (2006).

Publications

"Unfair advertising in Russia – guidance in four key areas", World Trademark Review (December/January 2010)

The article explains the Russian advertising legislation and the practice of the Federal Anti-monopoly Service in respect of many cases of unfair competition advertising including cases of superiority claims, unfavorable comparison and hidden advertising.

"Improper Notification of Right Holder and its Consequences", Patents and Licenses, No. 9 (2009)

The article examines the procedure used by the Chamber of Patent Disputes to notify the right holders about the date and time of the hearing. The article pays attention to the fact that there are no clear rules on this issue and in view of that refers to the Convention of November 15, 1965 on the Service Abroad of Judicial and Extra-judicial Documents in Civil or Commercial Matters. The article describes the recent outstanding case where the author managed to persuade the court that in case of contradiction between the local rule and the said Convention the latter should prevail.

"Trademark Enforcement", World Trademark Review (April 2009)

The article refers to the problem of the court jurisdiction. It gives an overview of the current court system in Russia and investigates the procedural differences in arbitration and common courts. Special attention is paid to the criteria of choosing the court for a particular IP dispute. The article also analyses some cases when the courts of different systems disputed about jurisdiction despite general prohibition on such disputes.

"What Happens if Agent Unfairly Obtains Trademark Registration”, Patent Attorney, No. 1 (2007)

The article examines the court practice related to Article 6septis of the Paris Convention for the Protection of Industrial Property, which prohibits agents and representatives of a party, which owns trademark registrations in one or more countries of the Union, from unfair obtainment of similar trademark registrations in their own names.

"Legal Principles of Free Movement of Goods in European Union", Monograph (2004)

The paper is about the substance and value of the principle of free movement of goods in the European Union. The paper investigates the nature and essence of the trade restrictions as well as the cases, when such restrictions are admissible. The paper includes a thorough analysis of the practice of the European Court of Justice and contains some recommendations on creating of a single market in the framework of the Commonwealth of Independent States and the Union of Russia and Belarus.

"Prohibition of Quantitative Restrictions and Measures Having Equivalent Effect in European Union", Comparative Jurisprudence and Questions of Private Law Regulation (2004)

"Transit Arrangements in European Union", Comparative Jurisprudence and Questions of Private Law Regulation (2001)

Speeches

“Trademark Rights Enforcement Practice”
delivered at the 7th Annual IP Seminar “Strategies for Protection and Managing of Company’s Intellectual Property”
Moscow, April 15, 2009

“IP Due Diligence and Appraisal”
delivered at the 6th IP Conference “Intellectual property: from reliable protection to efficient management”
Yekaterinburg, November 27, 2008

"Commercial or Common Court Litigation. Options to Consider"
delivered at the 5th IP Annual Seminar “Obtaining and Enforcement of Intellectual Property Rights in Russia and Ukraine”
Moscow, August 22, 2008

“IP Due Diligence and Appraisal”
delivered at the 6th Annual IP Seminar “Strategies for Protection and Managing of Company’s Intellectual Property”
Moscow, April 18, 2008

“IP Enforcement Practice”
delivered at the IP Seminar “Topical Issues of Trademark Protection Today”
Kazan, December 06, 2007

“IP Enforcement through Administrative Procedure”
delivered at the 5th Annual IP Conference “Intellectual property: from reliable protection to efficient management”
Yekaterinburg, October 31, 2007

"Litigation - an Option to be considered in Russia"
delivered at the 4th IP Annual Seminar “Obtaining and Enforcement of Intellectual Property Rights in Russia and Ukraine”
Kiev, August 31, 2007