Ekaterina Tilling

Ekaterina Tilling
The postSenior partner, Attorney at law
LanguagesRussian, English
Phone+7 (495) 782 28 30
Emaile.tilling@tillingpeters.com
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 contention 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. For last 8 years Ms. Tilling has been a Deputy Chairperson of the IP Committee of the Association of European Businesses (AEB) in Russia and is actively involved in the steering committees of the Association . Ekaterina is a part time teacher of the leading law schools in Russia – Higher School of Economics and MGIMO – handling her author program on IP for over 5 years. Ms. Tilling is included in the United Register of recommended arbiters of the Arbitration Center of the Institute of Modern Arbitrazh. Private practice since April of 2014. Since April 2015 - Senior Partner | Co-Founder of the law firm “Tilling Peters”. Before that Ms. Tilling was a Special Counsel and a Head of IP Moscow at Baker Botts (USA) for 3,5 years; and prior to these for 2 years she was an IP Partner at Berwin Leighton Paisner (Goltsblat BLP). She had previously worked as a litigator in the leading Russian law firms for 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 client - 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 trademarks 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

  • Interview jointly with Oxana Peters to the Corporate Lawyer Magazine on the managing of the legal business in the chapter “Faces of the Issue”, № 3, 2017
  • ICLG International Comparative Legal Guides: Copyrights 2017, dated 30/09/2016. Jointly with E. Burnova. https://www.iclg.co.uk/practice-areas/copyright/copyright-2017/russia
  • “Vital legal issues to consider when investing in technology-based projects in Russia”). Annual Bulletin of Association of European Businesses "How to Invest in Russia", 2014
  • “Intellectual Property and the Internet: A Global Guide to Protecting Intellectual Property Online”. 2014 | Chapter for Russia
  • Intellectual Property. Annual Report of Financier Worldwide (United Kingdom). Chapter for Russia. May 2013
  • “Fundamentals of Intellectual Property Due Diligence to help investors to protect their IP rights when entering the Russian market with technology based projects” Annual Bulletin of Association of European Businesses "How to Invest in Russia", 2012
  • “Creation of the new Russian Intellectual Property Court”), Intellectual Property Magazine, April 2012 (E. Polevaya, co-author)
  • “Brand protection in Russia: vital issues to consider”, Brands in the Boardroom 2011
  • “Unfair competition and parallel imports”, IP Value 2011
  • “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, 2nd 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

  • Speaker at the St-Petersburg International Legal Forum 2017 during the session organized by the Russian IP Court together with the ICC Russia with the topic “Compensations within patent disputes” on 17 May 2017
  • Speaker at the international conference “IP Rights Globalization and new Technologies” of the Baltic group of AIPPI (Association Internationale pour la Protection de la Propriété Intellectuelle) with the topic “IPR Litigation in Russia” on 11-13 April 2017, Jurmala, Latvia
  • Speaker and the moderator or the session at the conference of Moscow Times Newspaper “Intellectual Property: novels of the legislation and court practice”, topic “Internet of things and the IP rights”, on 28 February 2017
  • Moderator of the business breakfast TILLING PETERS on issues of legal liability of general management “CEO: limits of responsibility or when the business risk becomes the personal risk of the general manager”, Moscow, 15 February 2017
  • Speaker at the conference of the Kommersant Newspaper “Electronic commerce, Internet sales and multichannel chains”, topic «On-line commerce and personal data: recent trends of the legislation and the court practice”, Moscow, 30 November 2016
  • Moderator of the business breakfast TILLING PETERS jointly with the Legal Insight Magazine on the legal liability of general management “CEO: limits of responsibility or when the business risk becomes the personal risk of the general manager”, Moscow, 16 November 2016
  • Moderator of the round table “Preliminary injunctions in IP disputes” within the legal debates, organized by Legal Insight Magazine “Injunctions: how to turn over the case las”, Moscow, 26 October 2016
  • Speaker at the conference of Pravo.RU “Telecom and Internet 2016: legal issues – legislative answers”, topic “Recent trends of the case law on IP rights protection in the IT fields including Internet: jurisdiction of the disputes, evidence, pre-tiral settlement rules”, Moscow, 22 September 2016
  • Speaker at the Infor-Media IP Conference held on 16-17 April 2016 with a topic “IP disputes in information technology area, including Internet. Methods, proofs and evidence in commercial court proceedings”
  • Lecture on “Protection of copyrights in the Internet – evolution of Russian case law and adaptation of legal rules” at the seminars of International Summer School on Cyber Law (ISSC) of the “Higher School of Economics”. Moscow, July 07, 2015
  • Author’s course on IP at MGIMO (Moscow State Institute of International Relations of Russia – Leading Law School in Russia): February – March 2016 (32 Hours); February – March 2015 (32 Hours); November-December 2013 (16 hours) / October-December 2012 (16 hours) / October-December 2011 (16 hours) / September - December 2010 (20 hours) / September - December 2009, in collaboration with I. Motsny (16 hours)
  • Course on “Neighboring rights, complex objects. Comparing with international law and practice on copyrights and neighboring rights” within the general course on “Copyrights in Digital Age”. Course of lectures on the faculty of law of the Law School “Higher School of Economics”. Magister program “Legal informatics”. November – December 2015 (40 Hours), February-March 2015 (40 Hours)
  • Moderator of the round table on the theme "Intellectual Property in Social Media - recent trends in US, the EU and Russian law" at the international annual conference of INTA in Hong Kong, May 10-14, 2014
  • Organizer and moderator of the round table of the Association of European Businesses on "Intellectual Property and Social Media". Moscow, April 25, 2014
  • Presentation on «Claims for pledged intellectual property rights and their implementation” on the seminar of the Russian Licensing Society (LES Russia) «Pledge of Intellectual Property Rights). Moscow, December 06, 2013
  • Presentation on “Recent trends of consideration of patent disputes by courts” at the IV International Forum “Automobile industry and development of auto parts market in Russia”. Organized by Association of European Business in Russia”. Moscow, August 26, 2013
  • Lecture on “Recent Trends in Russian IP Law and Practice” at the seminars of International School of Digital Law of the “Higher School of Economics”. Moscow, July 02, 2013
  • Presentation on “Processing of Personal Data” at the conference of VEDOMOSTI newspaper titled “IT Business Strategies” within IV Annual Conference on “Inofmatization of Business in Russia”. Moscow, June 05, 2013
  • One of the organizers of the Annual Conference of the IP Committee of the Association of the Association of European Business (AEB). Presentation on “Recent trends of consideration of patent disputes by courts”. Moscow, May 24, 2013
  • Presentation on “Abuse of rights and unfair competition in recent case law” at the VI International Forum “Intellectual Property and XXI Century”. Moscow, April 24, 2013
  • Moderator of the practical session “Legal issues of ownership and management of intellectual capital” at the XIII Inter-industry Forum on Intellectual Property. Infor-media, Moscow, 20-21 March, 2013
  • “IP Transactions,” M-Logos University, IP course of lectures: 2012 – 3 lectures (12 hours); 2011 - 4 lectures (16 hours); in 2010 - 4 lectures (16 hours); in 2009 - 4 lectures (12 hours)
  • Participation in Baker Botts webinar series on Intellectual Property and Social Media. Issues and Best Practice of the USA, UK and Russia. Washington DC, September 25, 2012
  • Presentation on “Recent Developments in the Russian Court System – Creation of the Intellectual Property Court” at the international seminar of the Union of International Associations (UIA), Washington, DC September 21-22, 2012
  • Presentation on “Commercial designations and protection of know-how” at the hearings of the Ministry of Economics of Russia for discussions of the Draft of the Civil Code of the Russian federation as of 27 April 2012. Moscow, August 23, 2012
  • Lecture on “Forms of unfair competition in the aria of creation and use of the intellectual property rights” at the International School of Digital Law of the “Higher School of Economics”. Moscow, 2-7 July 2012
  • Moderator and one of the organizers of the Annual Conference of the Committee on IP of the Association of European Business (AEB), Moscow, June 2012
  • Moderator of plenary session "Current situation and development trends of legislation in the field of intellectual property" and the session "Intellectual property management." XII Interdisciplinary Forum on Intellectual Property, February 29-March 1, 2012. Organizer - InforMedia Russia
  • "Questions of belonging and protection of patent rights of developers and investors in investment projects" / Conference of "Adam Smith" Institute- "Research and development of innovative drugs in Russia", November 21-22, 2011, Moscow
  • "Changes in legislation in terms of know-how and trade secrets: matters that require attention," annual conference of the Subcommittee on IP of the Association of European Business (AEB), Moscow, June 2011
  • "Collection of royalties for free reproduction for personal purposes of works protected by copyright: Background in RF and review of international experience," Roundtable of Association of European Businesses (AEB), Moscow, May 2011
  • "Licensing and patent protection in the course of clinical trials" / Conference at "Adam Smith"institute: "Development and production of innovative drugs in Russia", November 17-18, 2010, Moscow
  • “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 century” organized by the Russian Chamber of Commerce, Moscow, April 2010
  • “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