Research Trends and Conclusions: Trademarks 2011
With the benefit of over 14 years of research and tens of thousands of votes from clients and private practitioners, Who’s Who Legal takes a closer look at developing trends in the trademark legal marketplace worldwide.
The health of the global economy has certainly shaped the nature of the work within this sector. With less money in the pot, clients are focusing on what they already have rather than on new ventures. For the most part, the lawyers we spoke with commented on how this has led to a reduction in the level of filing and clearance work and to an increase in enforcement matters. However, with signs that the market is gradually improving – there has been a noticeable increase in corporate support work – this trend is something to keep an eye on in the coming months. Lawyers also commented on how, although not entirely recession-proof, the area of trademarks has not suffered as much as other practice areas. In what have been financially trying times, clients of course have less money to spend but – crucially – it becomes a question of how they go about spending it.
The Google AdWords case, which was decided in early 2010, demonstrated that trademark holders were still willing to bring infringement cases despite the economic climate. In fact, many lawyers we spoke with commented that clients seek to defend their products more vigorously during a downturn. In particular, internet-related protection remains one of the key issues facing companies, as highlighted by the Interflora v Marks & Spencer case. On 24 March 2011, the Advocate General handed down his opinion on the question put to the Court of Justice of the European Union as to whether Marks & Spencer should be allowed to use the “Interflora” trademark as an internet search engine keyword to advertise M&S flowers. Despite following the CJEU’s ruling in the Google France case, the Advocate General reached the conclusion that Marks & Spencer’s keyword usage infringed Interflora’s trademark. Typing “Interflora” into a search engine and being directed to a Marks & Spencer ad under the heading “sponsored links” created a false impression that Marks & Spencer was part of the Interflora network. The Advocate General also commented that for there to be an infringement the mark must itself be mentioned in the advertisement. Should the CJEU agree, it may prove more difficult for trademark owners to prevent the use of their marks where this is not the case.
Another European institution that is mulling over recent findings is the European Commission. The Max Planck Institute published its Study on the Overall Functioning of the European Trademark System earlier this year, which included recommendations for ways to improve the efficiency of the Community trademark filing process; it remains to be seen whether the Commission will take on board the suggested improvements.
While the type of work in which practitioners have been involved over the past three years has, broadly speaking, been affected by the economic situation, the resilience of this practice area has meant that there has still been plenty of work to go around. This is further demonstrated by the 583 lawyers featured in this edition, with an additional 23 compared with the previous year. Newcomers Estonia and Serbia makes a first-time appearance in this year’s listing, while US firms continue to make their presence felt. Practitioners commented on how American mark holders are noted for being particularly rigorous in defending their brands and how US companies contribute significantly to the work that is exported globally. With more lawyers listed than in any other jurisdiction, the total of 151 lawyers from the US is almost three times more than the next leading jurisdiction – England – with 53 inclusions. IP specialist practices sit comfortably alongside full-service firms, with half of the 10 most highly nominated lawyers hailing from such firms. What is most interesting about this mix is that it demonstrates that firms with specialist knowledge are able to successfully compete with those that have broader practices. In a sector that involves the management of large client portfolios, there is a willingness to hand these over to practices that are dedicated to this work. That is not to say that full-service firms are not in demand for their IP work; the advantage they have is being able to offer other corporate services. In fact, when it comes to multiple listings, full-service firms perform particularly well.
Looking back over the past three years, Baker & McKenzie, Bird & Bird LLP and Fross Zelnick Lehrman & Zissu have seen steady year-on-year increases in the number of lawyers selected to feature. With the exception of Hogan Lovells LLP, which matched its performance in 2009, 2011 has been the best year for each of these firms.
Leading Firms by Edition
Taking a look at IP generally for these firms, Bird & Bird and Hogan Lovells also perform well in life sciences and patent research, whereas Fross Zelnick Lehrman & Zissu has a much more focused practice.
Leading Trademark Firms Across Who's Who Legal's IP books
Fross Zelnick Lehrmand & Zissu, which focuses on trademark, copyright, design patent and unfair competition law, is the only specialist IP firm to be counted as one of the most nominated, despite the fact that many full-service law firms have downsized their IP practices. As with Kilpatrick Townsend & Stockton, all the lawyers featured from this firm hail from the USA. In contrast, Baker & McKenzie, Bird & Bird and Hogan Lovells demonstrate the strength of their international practices with listings across the globe.
Leading Firms by Country
With economies in the west flagging, there has been a marked interest by western firms looking overseas for new opportunities. This has not yet fully translated into the trademarks arena, with western firms not having seen much by way of referral work from the emerging markets; instead, large international clients in particular find themselves referring work to local advisers. Looking at the BRIC countries, for example, despite our research showing no real growth in India or Russia (which have maintained the number of inclusions over the past three years), many lawyers we spoke to described how China continues to be a significant jurisdiction for them.
China’s growth as a consumer market means that it cannot be ignored by international mark owners; however, this growth in brand awareness brings with it an increase in counterfeit goods and issues surrounding piracy. In a report by CLSA, an Independent Asian brokerage and investment group, it was forecast that overall consumption in China would grow by 11 per cent annually over the next five years. What is most astonishing is that the sales of luxury goods is predicted to grow at more than twice that rate: 25 per cent. Chinese shoppers are keen to make their purchases abroad, not only to avoid the high taxes that can be placed on imported goods, but also to ensure they are buying the genuine article; with this in mind, mark owners are particularly keen to protect their products in this booming jurisdiction. The lawyers we spoke with noted the importance of having specialist knowledge from local firms, where the protection of trademarks can become a complex and lengthy process. Our research shows a gradual climb in the number of lawyers that have been listed over the years in China, all of whom hail from Beijing, and with only one international firm – Baker & McKenzie – in the mix at this stage. Chinese lawyers noted the progress that is being made in IP law as Chinese businesses move from producing “copy cat” goods to becoming true innovators. This domestic pressure on the government from local companies should see improved rights protection, and should also result in work being exported as Chinese companies seek to protect their interests abroad.
BRIC: Total Lawyers listed by Edition
As with China, Brazil has seen a year-on-year increase in the number of lawyers listed. Practitioners noted that while they have traditionally seen a lot of work from the US, the strength of the Brazilian economy has increased the workload from domestic clients. Further branding opportunities will likely also result from the FIFA World Cup in 2014 and Olympic Games in 2016.
US firms continue to dominate our research, followed by their European counterparts. These jurisdictions are home to some of the world’s biggest brands, and accordingly have more developed IP laws. While in some emerging markets we have seen an upward trend in the numbers that are listed, the increase is perhaps too small to suggest that these jurisdictions are coming into their own. Nevertheless, it will be interesting to see if the predictions of growth in these markets will ring true in the coming years.