Concentration

Intellectual property matters including trademark and patent prosecution, enforcement and licensing, copyright, personal data and know-how protection, advertising and media client counseling

Summary

Ms. Polevaya has broad experience in negotiating and advising on various IP transactions, such as IP licensing, franchising and assignment, including investment projects. She has also managed a number of due diligence projects with regard to analysis of IP assets.

Elena represents clients with regard to different matters in the Russian Patent and Trademark Office (Rospatent), including trademark filings and prosecution, registering of license, assignment, franchise and pledge agreements. She also represents clients in trademarks opposition and cancelation proceedings before the Chamber for Patent Disputes.

Elena assists in IP dispute resolution matters, including patent litigation.

Ms. Polevaya’s legal experience includes consulting clients with regard to different advertising, labeling and marketing issues.
Elena was managing a number of due diligence projects with regard to analysis of IP assets.

Ms. Polevaya has extensive experience across a broad range of industries such as oil, metallurgical, air transportation, food and beverage, restaurant, financial services, entertainment, construction, computers and electronics, telecommunications, clothing, hair care products and cosmetics, and other services and product industries.

Prior to joining Baker Botts, Ms. Polevaya worked as an Associate/ Trademark Attorney in a leading London-City Law firm. Before that she was heading the IP registration department in one of the Russian IP law firms.

Representative Engagements

• Managing the Russian trademark portfolio for a global consumer goods company. A recent project involved challenging Rospatent’s refusal to register a series of trademarks on the grounds of possible misrepresentation to consumers regarding the manufacturer of the goods and their origin.
• Advising an international chain of food stores on trademark issues, including conducting clearance searches and assisting in registration of trademarks.
• Assisted a major Russian metallurgical company with regard to prosecution of Community trademark applications.
• Assisted a group of pharmaceutical companies with regard to PCT application and national phase entries in more than 50 countries.
• Comprehensive legal support for one of world’s leading food manufacturers on protection of inventions, including in relation to agreements on disposal of the exclusive rights as well as patent disputes. Day-to-day advice, including advertisement and packaging issues.
• Consulted one of the world’s leading producers of sensors in Russia on extrajudicial settlement of a dispute over unlawful use by third parties of the client’s trademarks and trade name in domain names and on Internet sites.
• Working out and implementing a strategy of fighting against counterfeit goods in Russia for a well-known producer of alcoholic drinks; day-to-day work to ensure proper legal protection for trademarks.
• Cancelation for non-use on the territory of Russia of trademarks that hampered registration of the trademark of the client - a cosmetics manufacturer.
• Advice to a client – a major consumers goods manufacturer - in a dispute over violation of exclusive rights to trademarks; drafting and submission of objections to granting of exclusive rights to trademarks infringing on the exclusive rights of the client.
• Consulted one of the leading producers of home care systems on unlawful use of the client’s trademarks, trade name and copyright on the Internet site and domain name.
• Leading producer of medical diagnostic equipment - drafting and negotiating a software license agreement in the framework of distribution agreement of medical equipment.
• Drafting and negotiating an exclusive trademark and copyright licence agreement within the framework of launch of cosmetics on the Russian market for the world’s largest direct response television companies.
• Drafting and negotiating a complex license agreement, working out and implementing a confidentiality policy to ensure protection of know-how, drafting a know-how assignment and license agreements for the client - world’s leading water treatment and process improvement company.
• The world’s largest sportswear-producer - drafting and negotiating a licence trademark agreement covering all CIS countries, and a subsequent sublicense with the Russian distributor of the goods.
• Analysis of IP assets and related risks within a complex due diligence project for the client - a leading provider of speech technology and security equipment.

Publications, Speeches and Presentations

• “Registration of U.S. trademarks: recommendations for the foreign applicants,” Corporate Lawyer, January 2011
• “What to do with your IP,” Seminar in Skolkovo for MBA students, June 2010