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Marianna Grigorova

Marianna V. Grigorova

Associate
Moscow Branch of Baker & McKenzie CIS, Limited

Biography

Marianna Grigorova is an associate in the Moscow office of Baker McKenzie. Prior to joining the Firm, she worked at another international law firm and as an in-house lawyer.

Practice Focus

Marianna practices generally in the field of intellectual property, with a focus on general IP advice, trademark prosecution, litigation and IP enforcement and has been registered a trademark and appellation of origin attorney with the Russian PTO.

Representative Legal Matters

  • Acted for Porsche, Chanel and Richemont International in obtaining recognition of Porsche, Chanel and Cartier as well-known trademarks in Russia. To date only 198 trademarks in Russia have achieved the sought-after status. The well-known status grants a trademark a perpetual, retroactive and broader scope of legal protection, not limited by the specific list.

  • Advising Starbucks Corp. on setting of trademark protection strategies, assisting with trademark clearance, prosecution and enforcement and coordinate contentious activity related to cancellation of third parties' trademarks and termination of infringing use of the Client's famous brands on the territory of the CIS-countries.

  • Successfully represented Société Jas Hennessy (LVMH Group) in non-use cancellation proceedings initiated by the infringer as part of its defense strategy against the Hennessy trademark. The IP Court in both instances ruled in the Client's favor and dismissed the adverse party's claim as filed in bad faith.

  • Successfully defended Porsche AG in court disputes involving early cancellation of a series of its Porsche trademarks and acted against registration of Poshe TMs by the Ukrainian company. The court case was terminated by a court-approved settlement agreement highly favorable to Porsche.

  • Acted for the multinational corporation 3M Company against Russian holding company in seeking early cancellation of its confusingly similar trademark by developing the trademark "external use" doctrine. The victory opened a way to secure registration of the 3M's brand name and removed all risks associated with unregistered TM use for 3M.

  • Assisting 3M with a large-scale educational and enforcement campaign against dilution of the distinctive character of the client's famous trademarks, as well as coordinating non-contentious activities against local infringers' use of 3M's valuable brand names in domain names, company and trade names.

  • Successfully represented Guerlain in trademark non-use cancellation proceedings against Brocard Parfums. The cassation instance of IP Court reversed the decisions of the lower courts based on the forged documents and remanded the case to the first instance court for reconsideration. The litigation was closed by a court-approved settlement agreement favorable to our Client and followed up by assignment of the hampering trademark to Guerlain and its safe launch of a newly developed popular perfume brand name in Russia.

  • Advised SSAB (Rautaruukki Oyj) on complex IP protection strategies, assisted in trademark prosecution matters and handled enforcement campaign in Russia as well as successfully conducted non-contentious enforcement activities against local infringers.

  • Successfully represented Conde Nast in cancellation cases on non-use allegations in connection with a series of "Alure" trademarks owned by a Russian holding company. The decisions of the lower courts were successfully challenged and the Client's legal standing was supported in the cassation instance of IP Court. The favorable reversal made the adverse party to settle the case and to assign all challenged trademarks to Conde Nast's affiliate.

  • Represented global large-scale consumers goods' manufacturers and retailers in various trademark cancellation proceedings before the Chamber for Patent Disputes of Rospatent and the IP Court.

Professional Associations and Memberships

  • MARQUES - Member
  • Russian Patent Attorneys Association - Member

Admissions

  • Russia (2008)

Education

  • Moscow State Law Academy (Law Degree with honours) (2008)
  • Moscow State University (French University College) (2001)

Languages

  • English
  • French
  • Russian