Patent and Trademark Attorney
Attorney at Law, Partner
Phone: +7 926 2357679
Languages: Russian, English, French
Domain name disputes resolution
Patent and Design matters
Mark Chizhenok is a partner of law firm "Ivanov, Makarov & Partners" (IM&P). He is a prominent IP practitioner and litigator also known as an excellent speaker and legal researcher. Before IM&P foundation he has been involved in legal and specifically IP practice for about 10 years often dealing with important and unprecedented case. He started his legal work in 1998 as a leading participant of the non-profit University students’ project of pro bono legal consulting. During the same time he created, developed and managed a successful online consulting service. In 1999 he joined the major Russian IP Law Firm as a lawyer, specializing in Internet-related disputes. In the years 2005-2007 he tried himself as an associate of a foreign boutique law firm where he was responsible for building of intellectual property practice. After two more years of practice with the former IP law firm he co-founded "Ivanov, Makarov & Partners".
The Russian People's Friendship University (Moscow) - Master of Law, 2001, cum laude
The Russian People's Friendship University (Moscow) - Bachelor of Law, 1999, cum laude
December 2006 - Qualification as a Russian Patent Attorney No. 987 (inventions, utility models and industrial design).
March 2005 - Qualification as a Russian Trademark Attorney No. 987 (trademarks and appellations of origins of goods).
May 2003 - Qualification as an Advocate. Member of the Chamber of Advocates of Nizhegorodskaya oblast, Russia.
OAO "Pervy Moskovsky Tchassovoi Zavod” vs 3Ci - (WIPO Arbitration and Mediation Center). Domain name. Representing trademark owner claiming registration and use of domain name in bad faith (2004).
OOO "DenSo" vs DENSO CORPORATION - (Arbitration court of Saint-Petersburg, 11AAC, FACNWR). Domain name. Representing trademark owner against a claim of rights in the domain name (2003-2005).
DENSO CORPORATION vs OOO "DenSo" - (WIPO Arbitration and Mediation Center). Domain name. Representing trademark owner claiming registration and use of domain name in bad faith (2003).
"Divided courts fail to see grey imports as a black-and-white issue", Brands in the Boardroom (May 2010)
The article explains dramatic changes in the Russian court practice in respect of parallel import of branded goods, which was long and still is an important issue for trademark protection in Russia. The changes were caused by the ruling of the High Arbitration Court in Porsche Cayenne case in the year of 2009.
"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.
"Contextual online advertising in Russia", World Trademark Review (February/March 2009)
The article gives an overview of the current situation with contextual advertising in the Russian Internet from the legal point of view and questions the ability of the general and non-specific laws and regulations to protect intellectual property owners against abusing use of this new and growing advertising media.
"New adventures for domain names in Russia", Patents and Licenses, No. 7 (2007), 2-8
The article investigates the destiny of domain name protection provisions in the Fourth Part of the Civil Code of the Russian Federation from the initial draft of the law filed with the State Duma till the actual version of the Civil Code adopted by the parliament. From the perspective of this history the readers are provided with an understanding of the survived provisions.
“Non-use of trademark: five years in three!”, IP. Industrial Property, No. 4 (2006)
The article was about the amendment introduced into the law in the year 2002 which made the term of allowed non-use of a trademark shorter: three years instead of five. This amendment caused wrong implementation of the shorter term to all trademarks without exemptions. Only two years later one of the court's decisions made the authorities changing this practice. However, the problem remained with those trademark registrations which had been unlawfully cancelled during that period. This problem was discussed in the article.
"Useless right of prior use", Patent Attorney, No.3 (2006)
The article thoroughly analyzes the provisions of the Russian Patent Law providing for the right of prior use in respect of the inventions to come to an unpleasant conclusion that this right is so limited that it makes it almost useless: the analyses shows that the customers of the products manufactured by the prior use right holder can be nevertheless liable for patent infringement.
“Critics of objective novelty”, Patents and Licenses, No. 6 (2004), 41-45
This article is the polemics with the doctrine of objective novelty which prevails in the Russian copyright science and practice. The doctrine has it that a newly created work enjoys copyright protection only in case this work is created for the first time in history and is not known to anyone else in the world. This article disputes the said approach and introduces subjective novelty as more fair and effective rule: if the work i new to the author it is copyright.
“Copyright vs industrial property”, Intellectual Property Exchange, No. 6 (2004)
The article examines legal collisions between copyright and other intellectual property such as patents, trademarks and company names in the framework of the Russian laws. By the example of copyright it shows that one and same subject matter can be simultaneously protected by different property rights, these rights may belong to different persons and there is no legal ground to deny such possibility.
“Domain names in the Internet”, in “Trade Marks in Russia” (Moscow, 2004), pages 194-216
This long essay is a chapter of the book “Trade Marks in Russia”, published by the major Russian IP firm. The book covers most of the trademark related legal and economic issues: from the history of the trademarks as such to the future perspectives, and the chapter in question is a kind of campaign against illiteracy aiming to provide readers with general knowledge about domain name system and its impact of the trademark's world.
"Domain names and trademarks"
delivered with variations at the LES Russia Meeting (Moscow, November 25, 2003) and at the seminars “IP Protection Strategy for Successful Business Development” (Moscow, November 27, 2004 and April 14, 2005).
"Registration of Internet domain names"
delivered at the seminar “Obtaining and Enforcement of Intellectual Property Rights in Russia” (Moscow, September 21, 2004).
"IP conflicts in the Internet"
delivered a with variations at the seminars “Obtaining and Enforcement of Intellectual Property Rights in Russia” (Moscow, September 24, 2004 and September 24, 2005) and the conference "Protection of IP" (Alushta, May 31, 2006).
"Trademark and name of mass media: live from the court's room"
delivered at the seminar “Trademark and name of mass media: hidden dangers and intellectual asset” (Moscow, November 26, 2004).
"Peculiarities of trademark protection in Russia"
delivered at ISPO Russian Forum (Munich, February 09, 2005).
"Fighting counterfeit goods and IP litigation in Russia"
delivered at the seminar “EU Enlargement – One Year Later. Anti-counterfeiting in Poland and Beyond” (Warsaw, May 06, 2005).
"Trademarks and potentially conflicting subject matters"
delivered at the conference “Effective Management of Intellectual Property” (Saint-Petersburg, June 18, 2005).
"Registration of copyrighted works as trademarks and protection thereof"
delivered at the seminar “Copyright: defence and protection” (Moscow, June 23, 2005).
"Trademarks vs Domain names. Round IV"
delivered at the seminar "Strategies of IP protection for success of the business" (Moscow, April 18, 2008).
"Smoking gun: suing infringer soon"
delivered at the seminar “Obtaining and Enforcement of Intellectual Property Rights in Russia” (Moscow, September 18, 2009).
Traveling, photography, SCI-FI, web-design, cinema, mahjong.