Ekaterina Tilling

Partner, Attorney at law, Head of IP and IT practice

- - ekaterina.tilling@birchlegal.ru

About

Ekaterina is well-recognized in Russia for her expertise in Intellectual Property with more than twenty years of experience, including both contention and non-contention matters.

Ekaterina has significant experience in handling complex investment projects involving different IP assets, as well as negotiating and advising on various IP and 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 the Chamber of Patent Disputes of Rospatent, antimonopoly bodies and prosecutor’s offices.

Since 2015, Ekaterina has been a Senior Lecturer in the Department of Digital Law and Biological Law of the National Research University Higher School of Economics (HSE) and the co-author of several programs on IP rights. In addition, Ekaterina collaborated with another leading law school in Russia, the Moscow State Institute of International Relations (MGIMO) for more than 5 years as a part-time lecturer and was the author of programs on intellectual property issues for master's students of this leading Russian university.

Ekaterina is also qualified as a Mediator of International and Community Conflicts by the Conflict Resolution, Research and Resource Institute, Inc. (CRI). She took the Russian-American program on Conflictology training course (R-APC) in 2006. Her qualifications as a mediator are confirmed by the diploma of the International Institute of Management of Entrepreneurs' Associations at the Chamber of Commerce and Industry of Russia.

The key sectors of the economy she deals with are medicine and pharmaceuticals, industrial production, high technology and the entertainment industry.

Ekaterina has been an attorney at law admitted to the Moscow Region Bar Association (Chamber of Attorneys at law) since 2002.

Ekaterina is included in the United Register of recommended arbiters of the Arbitration Center of the Institute of Modern Arbitrazh (www.centerarbitr.ru).

Ekaterina is a member of the Scientific Advisory Board of the Intellectual Property Court.

Ekaterina is also included in the board of mediators at the Chamber of Commerce and Industry of the Russian Federation.

Experience

  • representing Bayer HealthCare in several patent litigations in Russia against Nativa, a Russian generic manufacturer, and some other generic drug manufacturers

  • representing the largest IT company in Russia providing over 100 different IT services in a series of cases (more than ten) in a dispute with one of its competitors over the use of a trademark. The case has formed the court practice for the application of part 10 of Art. 1483 of the Russian Civil Code concerning entering one trademark into another

  • successfully protecting the rights of Prosveschenie Publishing House, the leading Russian publishers of educational literature, who filed against another major publisher of educational literature, EXAM Publishing House, for the infringement of the client’s exclusive rights to design the covers of its books. The claim was fully satisfied, and the client got RUB 64m as compensation for the violation of its rights. The dispute was finally resolved amicably – the parties agreed on the client’s acquisition of a share in Exam Publishing House

  • successfully representing the interests of SAMSUNG ELECTRONICS CO., LTDagainst LG Electronics Inc. on challenging the registration of the trademark QLED owned by LG. The Chamber for Patent Disputes of the Russian Trademark Office (Rospatent) satisfied our opposition and invalidated the QLED trademark owned by LG. Rospatent’s decision was challenged by LG in Russian IP Court, but the court upheld Rospatent’s decision. Rospatent and the IP Court supported our arguments that QLED is a generally accepted term used in the field of digital electronics

  • successfully protecting the interests of OZON.RU, the largest Russian e-commerce company, in several domain name disputes against Russian cyber-squatters

  • advising Home Credit Bank, one of the largest B2C banks in Russia, on a wide range of IP matters connected to the client’s business activities in Russia, which involves advising on different matters of IP rights licensing as well as advising on trademark registration strategy, protection of copyrights within PR activities, etc.

Ekaterina's experience also includes her projects before joining BIRCH LEGAL.

Education

2021The International Institute of Management of Business Associations under the Chamber of Commerce and Industry of the Russian Federation, course on the mediation program
2006Conflict Resolution, Research and Resource Institute, Inc. (CRI), course of the Russian-American program on Conflictology (R-APC)
2003Russian Academy of Sciences, Institute of State and Law (IGP RAN), Post-graduate studies in international private law
2003Essex Court Chambers, London, UK, Pupillage in International Commercial Arbitration and civil procedural law, under the QC’s mentoring
2003Pump Court Tax Chambers, London, UK, Pupillage in tax law, with emphasis on VAT, under the QC’s mentoring
1998Moscow State University named after M.V. Lomonosov, Specialist’s Degree in Law

Languages

  • English
  • Russian

Career

2022–pres.Partner, Head of IP and IT practice, BIRCH LEGAL
2019–2022Partner, Head of IP and IT practice, Eversheds Sutherland
2014–2019Co-founder, Senior Partner, Tilling Peters
2010–2014Special Counsel, Head of IP Moscow, Baker Botts
2009–2010Partner, Head of IP, Berwin Leighton Paisner (renamed to Bryan Cave Leighton Paisner)
2006-2009Head of IP Practice, Pepeliaev, Goltsblat & Partners
2004-2006Co-founder, Attorney at law, Moscow Regional Bar Association, Ars Iuris
2002–2004Attorney at law, Moscow Regional Bar Association YUST
1998–2002Associate, YUST Law firm
1994–1998Legal assistant, Baker & McKenzie, Moscow

Testimonials

Ekaterina has been recognized as a leading lawyer in IP and TMT by the Kommersant Legal Rating 2023

Ekaterina was personally mentioned as a leading lawyer in IP, ТМТ, Consumer and Retail in the Pravo300 Legal Rating 2022-2024

Ekaterina entered the top 15 best lawyers in Russia advising companies in the TMT, Life Sciences and Healthcare sectors in the Kommersant Legal Rating 2021-2022

Ekaterina has been recognized as one of the recommended practitioners in Russia in the area of Intellectual Property by The Legal 500 2007-2021

Ekaterina has been recognized as a leading lawyer in IP Dispute Resolution (Band 2) by WTR-1000: (The World's Leading Trademark Professionals) 2016-2021

Ekaterina has been recognized as a leading lawyer in IP Dispute Resolution by Leaders League 2021

Ekaterina has been named a Patent Star and Trademark Star by IP Stars 2016-2021

Ekaterina has been recognized as a recommended expert in Russia for Trademarks and Patents by Who's Who Legal 2010-2021

Ekaterina is ranked in Women in Business Law and Trademarks by Expert Guides 2020-2021

Ekaterina has been recognized in Russia in the practice area of Intellectual Property as one of the recommended practitioners by PLC Which Lawyer 2007-2012

Ekaterina has been recognized as one of the leading Intellectual Property lawyers in Russia by European Legal Experts 2007-2013

The winner of the International Law Office Client Choice Award 2010 and 2011 as the best lawyer in the practice area of Intellectual Property in Russia

“She was like a sounding board on what you can and can not do”, Chambers Global 2022

“Ekaterina Tilling is result oriented, shows true interest in the client’s success, and has the ability to offer effective solutions”, The Legal 500 2021