Concentration

Intellectual Property/Information Technology-contentions and non-contentious matters including licensing and IP transactions, IP/IT related investment projects, franchise and distribution, Internet and e-commerce, advertising and media, personal data protection; IP litigation-patent litigation, trade secret litigation, trademark and copyright litigation

Summary

Ekaterina Tilling is recognized in Russia for her experience working in the practice area of Intellectual Property. She has practiced in IP for over 15 years, including both contentions and non-contention matters.

Ekaterina has significant experience in handling complex investment projects involving different IP assets, as well as in negotiating and advising on various IP/IT transactions (software development, franchising, IP assignment and licensing). She is also highly skilled in solving IP disputes in Russian courts of all levels, including the RF Supreme Arbitration Court, as well as in the Chamber of Patent Disputes of Rospatent, antimonopoly bodies and prosecutor’s offices.

Ekaterina is also qualified as a Mediator of International and Community Conflicts by the Conflict Resolution, Research and Resource Institute, Inc. (CRI). She took a course of training of the Russian-American program on Conflictology (R-APC) in 2006.

Ms. Tilling is a Deputy Chairperson of the IP Sub-Committee of the Association of European Businesses (AEB) in Russia and is actively involved in the work of the AEB.

Prior to joining Baker Botts, Ms. Tilling was an IP Partner of a leading London-City Law firm for two years. She had previously worked as a litigator in the leading Russian law firms over 8 years and then as a Head of IP with one of the leading Russian law firms for more than 3 years.

Representative Engagements

IP/IT Consulting

• Advised one of the leading private equity firms operating in Russia and the CIS on its investment into the Russian company-developer of the speech technologies (included complex DD of all IP/IT assets - over 100)
• Advised leading private equity firm on its investment into a major Russian software company (included complex DD of all IP/IT assets - over 200)
• Advised leading private equity firm on its investment into a major Russian animation content producer (included complex DD of all IP/IT assets-over 400)
• Advised leading international venture capital company on its investments into patented technologies in Russia (included complex DD of the patent rights)
• Advised large international FMCG companies on provisions of know-how license and franchise agreements involving transfer of know-how and assisted in drafting the requisite documents for protection of know-how, including company guidelines and policies, lists of information protected as know-how, confidentiality and non-disclosure clauses and statements
• Performed IP due diligence of Russian subsidiaries of a big international media company that holds exclusive rights in many famous Russian TV series and films
• Advised several international trade companies on their model for trade mark licensing and franchising in Russia, assisted with drafting and registration of all trade mark license and franchise agreements with the Russian Intellectual Property Office
• Advised leading Russian pharmacy chain on the franchise model to be used in the new business structure which also included solving complex antitrust and tax matters
• Managed a patent portfolio in Russia for a large international FMCG company as well as provided daily advice on various IP issues including patents, know-how, copyright and trade mark licenses
• Advised a Russian leading bank on the procedure of recovery against the subject of the pledge of copyrights for series of movies as well as against the material object

IP/IT Dispute Resolution

• Successfully protected the rights of a leading large foreign cosmetics production company in the RF Supreme Arbitration Court in a lawsuit contesting a resolution passed by the Chamber for Patent Disputes on Rospatent regarding early termination of legal protection of a trademark
• Successfully protected the rights of several leading international companies in the fashion and cosmetics business, as well as one of the leading international companies in the motor industry, in court disputes over unlawful use of the clients’ trade marks in domain names by Russian cyber-squatters
• Successfully protected interests of a major German company (sugar industry) in a patent dispute relating to the client’s inventions initiated under statements of claim filed by a Russian inventor against the client and its several Russian sub-contractors in the Belgorod Region
• Successfully represented a number of well-known German companies (motor industry) in series of litigations against patent-holders in disputes over patent invalidity
• Acting on behalf of and American conglomerate, successfully resolved several potential disputes over unlawful use of the client’s trade marks in domain name by third parties at the prejudicial stage. The domains were assigned to the client in amicable manner
• Successfully resolved a court dispute initiated by a competitor against the clients-a leading Russian pharmacy chain-on a trade mark infringement by using the designation as the chain brand similar to the competitor’s’ registered trademarks. During this dispute the competitors trademarked were also successfully challenged in the Chamber of Patent Disputes of Rospatent. The case was resulted by an amicable statement made by parties

Information Technologies and Media

• Assisted to a world leader Internet provider in several projects relating to the public Internet projects which involved the complex measures relating to developing of the concept, drafting rules, polices and set of Copyrights License Agreement; daily advise of this client on software development and licensing issues
• Advised a big international IT company on compliance with Russian regulatory requirements and disclosure of information
• Advised a Dutch producer of navigation equipment on its entry into the Russian marketplace and compliance with Russian IP and personal data laws
• Advised a US company-a digital maps provider for in-car navigation systems, mobile and Internet map applications for more then 24 countries, and its Russian subsidiary on technology licensing in Russia and compliance with Russian regulatory requirements; advised this client on a regular basis on different contractual issues relating to sublicensing and distribution on digital maps in Russia
• Advised a large media group on a complex matters on trade mark licensing issues as well as on proper licensing of copyrights for TVCs and movies
• Daily advise to several large FMCG companies on different issues on compliance of their TVCs to the Russian advertisement law

Publications, Speeches and Presentations

Publications

• “Recent IP developments: hot topics and key court decisions,” IP Value 2010 (I. Motsnyi, co-author)
• Collected Articles “Intellectual Property and Advertising: Topical Issues, Administrative and Judicial Practice,” Alpina Publishers, 2010, edited by E. Tilling and I. Shablinskyi: “Latest trends in the IP case law” (I. Motsnyi, co-author), “Trademark law enforcement when entering goods into Russia and related “grey market” issues“, “Company’s legal name: any changes required?”
• “Dealing with trademarks in Russia,” IP Value 2009 (I. Motsnyi, co-author)
• “How Russia’s courts treat the grey market goods,” Managing IP Magazine, July/August 2009
• Global Legal Group (GLG), The International Comparative Legal Guide to Pharmaceutical Advertising 2009, Chapter 35 - Russia (V. Bondar, co-author)
• Comments to the Civil Code of the Russian Federation, 2^nd edition, Institute of State and Law, URAIT, 2008, edited by T.E. Abova, M.M. Boguslavskyi, A.G. Svetlanov, Chapter 67 (Art. 1198), Chapter 70 (Art. 1260, 1273, 1284, 1294, 1299), Chapter 71 (Art. 1309, 1318, 1319), Chapter 72 (Art. 1371, 1372)
• “Trademark Rights When Importing Goods to Russia: Recent Decisions,” World IP Review, November – December 2008 (V. Loschilin, co-author)
• “Russia Updates New Legislation,” World IP Review, September – October 2008 (V. Loschilin, co-author)
• “Bans in advertising of medications, medical devices, products and services for consumers, in brief,” The Pharmaceutical Industry Journal, July-August 4/2008 (I. Chubukova, co-author);
• “A Bitter Pill, an article on legal aspects of medication advertising in mass media,” Rossiyskaya Gazeta, the “Economics, Pharmaceutical Market” section, 22 April 2008, No. 87 (4644) (I. Chubukova, co-author);
• “Changes to IP legislation ring in the new year,” IP Value 2008 (I. Motsnyi, co-author)
• “Fiscal discrimination: practical features of taxation of royalties for the trademark use,” Buy Brand: Franchising in Russia, #3, 2007 (Dr. Denis Schekin, co-author)
• “Brand enforcement in Russia,” World Intellectual Property Review 2007, annual edition
• “Aspects of Brand Enforcement under Russian IP Laws,” IP Review #5, 2006

Speeches and Presentations

• Author’s course on IP (20 hours) in MGIMO (Moscow State Institute of International Relations of Russia – Leading Law School in Russian), September – December 2010
• “IP Transactions,” M-Logos University, IP course of lectures, September 2010, June, 2010, April 2010, February 2010, November 2009, June 2009, April 2009, etc.
• “Latest trends in the patent case law,” AEB IP sub-committee annual conference, Moscow, June 2010
• “Managing IP Portfolio. How to prioritize,” Annual conference “Forum-2010. Intellectual Property – XXI sentry” organized by the Russian Chamber of Commerce, Moscow, April 2010
• Author’s course on IP (16 hours) in MGIMO (Moscow State Institute of International Relations of Russia – Leading Law School in Russian), September – December 2009 (I. Motsnyi, co-author)
• “Control and Licensing of the Olympics Brand - The UK and Russian perspective,” Round table hosted by the British Embassy in Moscow on topic of “Protection of the Olympic Brand”, Moscow, July 2009
• “Abuse of rights and unfair competition in the Joint Resolution of the Supreme Court of the Russian Federation and the Supreme Arbitration Court of the Russian Federation,” AEB IP –Sub-Committee Annual Conference, June 2009
• “Managing an Intellectual Property portfolio during the crisis. How to prioritize,” Moscow Times Conference “Practical Anti-Crisis Measures: market trends, refinance, restructuring, bankruptcy, dispute resolution, British and Russian Experience, June 2009
• “Abuse of rights as a form of an unfair competition. Latest trends of the court case law,” Annual conference “Forum -2009. Intellectual Property – XXI sentry” organized by the Russian Chamber of Commerce, April 2009
• “Importing goods and exercising using the exclusive rights to a trade mark. “Grey import” issues in the recent case law,” Business Breakfast - Foreign Trade Operations: Intellectual Property, Royalties, Payment of Customs Charges and Domestic Taxes, Moscow, March 2009
• “Advertising of medicine and medical equipment. Theory and Practice,” 4th International Infor-Media Conference - Pharmaceutical Business in Russia, Moscow, February 2009
• “How to protect your brand: from idea to registration,” Adam Smith Conference – Russian Food &Beverage Forum, Moscow, November 2008
• “Computer programs created in the course of employment: practical guidelines for employers,” AEB IP Sub-Committee conference – “Software contracts and Part 4 of the Civil Code: What Foreign Companies Working with Russian Software Developers Should Know,” Moscow, January 2008
• “Part IV of the Russian Civil Code. Review of changes of the Russian IP law,” Seminar of the Association of the Russian-German Commercial Law, Berlin, November 2007
• “Commercial use of the brand: licensing and franchising,” International Adam Smith Conference - 2nd Russian Summit of Marketing Directors, Moscow, October 2007
• “Patent litigation in Russia” IQPC Conference – “Pharmaceutical & Biotech Patent Litigation Strategies 2007,” London, March 2007