Roundtable: Trademarks
The International Who’s Who of Trademark Lawyers has brought together four of the leading practitioners in the world to discuss key issues facing lawyers today
Participants
Ella Cheong
Ella Cheong (Hong Kong)
Hong Kong
New Challenges
Who’s Who Legal: Have the recent worldwide economic difficulties affected the nature and amount of work for trademark lawyers? Which areas remain particularly busy?
Cynthia Rowden: The changes to the economy have affected everyone, and trademark lawyers are no exception. Clients expect more value for their money, and services that recognise the realities of the impact that the economy have had on their businesses. There is much more attention to budgeting, more efficient communication, timeliness and sensible business advice.
Ella Cheong: Although the economy worldwide seems not to have bounced back completely, nevertheless trademark filings have increased, despite trademark owners continuing to reduce or control budgets for some less urgent projects such as title updates and raid actions against small-scale infringers. In China, areas important to trademark owners continue as previously for, firstly, anti-counterfeiting actions against medium-sized and large infringers, and secondly, new applications for key trademarks.
Iris Quadrio: The economic crisis has no doubt had an impact on the IP business, particularly as clients are now much more budget-conscious and look for practical and at the same time in-depth advice. In view of the nature of trademark work, non-urgent filings or projects have been postponed and this resulted in less trademark prosecution work, although business has been picking up in recent months in this and in other areas as well.
For example, the trademark enforcement area has remained particularly busy. In this regard, we have seen an increase of trademark conflicts involving use of trademarks in cyberspace and domain names issues, as the increase in commerce through the internet has brought about an increase in anti-counterfeiting activity and surveillance. More companies are seeking to register their trademarks with the Customs since the system was successfully implemented in Argentina in 2007. Last but not least, pretrial mandatory mediation, after 15 years of experience, has finally been put into place definitively in the City of Buenos Aires by Law No.26.589 continuing to provide an effective alternative dispute resolution tool and a sustained source of professional work for trademark lawyers.
Servicing the Client
Who’s Who Legal: How has the relationship changed between client and law firm? Have there been any developments in terms of billing rates and other services?
Fabrizio Jacobacci: Clients have often slashed their budgets and postponed to the subsequent year all actions that are not subject to an unextendable deadline. Also, while litigation has been affected only marginally – more clients require more efficiency, but the volume of cases has remained unchanged – large filing programmes are mostly kept on hold or substantially reduced.
Iris Quadrio: It is very important in these circumstances to work together with clients in order to find mutually satisfactory solutions.
A few clients have requested rate freezes, and some discounts were agreed on a case-by-case basis, tailored to meet the clients’ needs. The analysis of trademark portfolios to remove any unnecessary registrations was also requested as a way to reduce costs. In addition, we have noted that companies are increasingly turning to e-billing systems and have become more demanding in terms of compliance.
Ella Cheong: Clients and law firms work more closely than ever before on setting up budget plans. Law firms cooperate with long-term clients for a more flexible mode for saving costs, and assist clients to prioritise fields and areas of work, and offer discounts where relevant, eg, for bulk filings.
Now, clients with a global trademark portfolio more and more often grant outside counsel access to the clients’ (internal) trademark databases in order to involve outside counsel in making entries and keeping information in such databases up to date. Some clients also involve outside counsel in making entries in their internal budgeting systems with book-keeping requests.
Cynthia Rowden: Relationships have changed in ways that reflect the changing roles of in-house counsel. In-house counsel are much more experienced in specialised areas of the law, busier, and more directly involved in business decision-making. Contact with them needs to be focused on getting to the heart of the decisions and advice they must give to their in-house clients as quickly and accurately as possible. Much of the routine work under their control is delegated to paralegals, and their skills have increased tremendously. It is critical to develop close working relationships with all client contacts.
There is more attention to accurate and fully detailed billing, and also much more encouragement of special billing rates, with agreed discounts and/or fixed fees. Large projects often have agreed budgets. All of these ultimately mean that law firms have to be more efficient.
Firm Models
Who’s Who Legal: In your opinion, are there any benefits conferred to the lawyer who is part of a full-service firm, as opposed to an intellectual property boutique firm? Which model do you believe is more effective, where this practice area is concerned?
Iris Quadrio: Our firm was originally founded as a patent and trademark agency but then extended its activities to include the provision of legal services. The IP group, which still prides itself upon having been the starting point of our firm, remains a core area and benefits enormously from the expertise of other practice groups when advice on other aspects of law is needed. In our opinion this balanced format, making the most of an IP boutique firm and of a full-service law firm, has proved to be effective and of great help to clients.
Cynthia Rowden: At the risk of being biased by my membership in a IP boutique, my feeling is that most IP boutiques offer a depth of experience in IP that very few general firms can match. They also have systems and staff devoted to maintenance of IP records, which means specialised information and skills that have not evolved from other practice areas. As a lawyer who has spent her career in an IP specialty firm, I feel that I benefited enormously from the education and experience of others in the firm, and that it would have been difficult to learn as much, as quickly, and also be exposed to a myriad of difficult and interesting IP issues in a general firm.
Ella Cheong: Full-service firms attract clients by virtue of their diverse practice in various fields of law, especially for commercial transactions (in particular mergers and acquisitions) which usually do include some IP issues. However, the lawyers involved do not generally have in-depth experience of, and thus may not appreciate, all such IP issues, particularly in light of the very many aspects covered in such commercial transactions.
On the other hand, IP boutique firms have much experience in handling all kinds of IP matters, especially those involving complex IP issues. Such firms usually have mature management and computer data systems to ensure deadlines are not missed.
Fabrizio Jacobacci: We have been for a long time an IP specialty boutique, but in January 2009 we expanded our range of services to corporate, M&A and commercial law and litigation. In doing so, however, we preserved IP as the main focus of the firm and non-IP accounts today for about 20 per cent of the firm’s global business. We did expand to those areas of law because we thought (and think) that it would be beneficial to the IP practice in that it would offer IP lawyers the possibility to rely on the expertise of other specialised lawyers whenever there is a situation requiring skills and experience in more than one area of law, as is often the case in transactions involving IP rights. At the same time, by maintaining the emphasis on IP the firm should be able to avoid the main risk of large multi-practice firms, namely the loss of the best IP talents who rarely fit into large (bureaucratised) firms. In the end I think that between the two extremes, a pure IP firm and a large multi-practice firm, there is room for compromise and that such compromise can be the best of all options.
Regulatory Developments
Who’s Who Legal: Have you seen any significant new regulatory changes in your jurisdiction, or are there any impending changes soon to come? What challenges are presented when representing a client with a multi-national presence in terms of inter-jurisdictional regulatory variations?
Ella Cheong: The China Trademark Law is being revised but not expected to be finalised until 2011/12. It is envisaged, inter alia, that multi-class filings may become available under the new law.
The biggest challenge is to let clients fully understand and agree to some proposals which protect their interests to the utmost extent under the local laws, but may be different from those under the laws of the home countries of the clients, eg, in China there are sub-class headings, even though China has adopted the Nice Classification of Goods/Services, which means clients may need to consider filing several applications in the same Class.
Cynthia Rowden: The Canadian Intellectual Property Office has launched numerous initiatives in the last few years, and plans many more in the upcoming years, to – in their words – modernise Canadian IP laws and bring them more into line with international practice. These changes have impacted practice in the trademark and patent areas, and new legislation is being proposed to significantly change copyright and trademark laws.
In terms of representing clients with inter-jurisdictional issues, the key is to deal with the most knowledgeable associates, to ensure that local laws are well known and advice is given as soon as possible. Regardless of how much harmonisation we see in laws and regulation there will continue to be local differences, and clients are best served by dealing with local experts.
Iris Quadrio: While no formal harmonisation process is underway in Latin America, it is possible to discern a trend towards common basic protection. This can be seen through the formation of trading blocs, the influence of minimum standards required by some of the free trade agreements, and the meetings between the directors of the different PTOs.
Almost all Latin American countries are party to TRIPs, which specifically provide for the existence of border measures, but a trend towards harmonisation also seems to be arising from the national implementation of TRIPs provisions.
In this scenario, the biggest challenge is still to understand how each national system works and this can be achieved through a network of reliable associates in each country. In order to handle the matters regionally, services provided by networks of correspondents constitute a valuable tool to help companies manage their trademark portfolios.
roundtable
The International Who’s Who of Trademark Lawyers has brought together four of the leading practitioners in the world to discuss key issues facing lawyers today
PARTICIPANTS
Ella Cheong
Ella Cheong (Hong Kong)
Hong Kong
Fabrizio Jacobacci
Studio Legale Jacobacci e Associati
Italy
Iris Quadrio
Marval O’Farrell & Mairal
Argentina
Bereskin & Parr LLP
Canada
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ew challenges
Who’s Who Legal: Have the recent worldwide economic difficulties affected the nature and amount of work for trademark lawyers? Which areas remain particularly busy?
Cynthia Rowden: The changes to the economy have affected everyone, and trademark lawyers are no exception. Clients expect more value for their money, and services that recognise the realities of the impact that the economy have had on their businesses. There is much more attention to budgeting, more efficient communication, timeliness and sensible business advice.
Ella Cheong: Although the economy worldwide seems not to have bounced back completely, nevertheless trademark filings have increased, despite trademark owners continuing to reduce or control budgets for some less urgent projects such as title updates and raid actions against small-scale infringers. In China, areas important to trademark owners continue as previously for, firstly, anti-counterfeiting actions against medium-sized and large infringers, and secondly, new applications for key trademarks.
Iris Quadrio: The economic crisis has no doubt had an impact on the IP business, particularly as clients are now much more budget-conscious and look for practical and at the same time in-depth advice. In view of the nature of trademark work, non-urgent filings or projects have been postponed and this resulted in less trademark prosecution work, although business has been picking up in recent months in this and in other areas as well.
For example, the trademark enforcement area has remained particularly busy. In this regard, we have seen an increase of trademark conflicts involving use of trademarks in cyberspace and domain names issues, as the increase in commerce through the internet has brought about an increase in anti-counterfeiting activity and surveillance. More companies are seeking to register their trademarks with the Customs since the system was successfully implemented in Argentina in 2007. Last but not least, pretrial mandatory mediation, after 15 years of experience, has finally been put into place definitively in the City of Buenos Aires by Law No.26.589 continuing to provide an effective alternative dispute resolution tool and a sustained source of professional work for trademark lawyers.
Servicing the client
Who’s Who Legal: How has the relationship changed between client and law firm? Have there been any developments in terms of billing rates and other services?
Fabrizio Jacobacci: Clients have often slashed their budgets and postponed to the subsequent year all actions that are not subject to an unextendable deadline. Also, while litigation has been affected only marginally – more clients require more efficiency, but the volume of cases has remained unchanged – large filing programmes are mostly kept on hold or substantially reduced.
Iris Quadrio: It is very important in these circumstances to work together with clients in order to find mutually satisfactory solutions.
A few clients have requested rate freezes, and some discounts were agreed on a case-by-case basis, tailored to meet the clients’ needs. The analysis of trademark portfolios to remove any unnecessary registrations was also requested as a way to reduce costs. In addition, we have noted that companies are increasingly turning to e-billing systems and have become more demanding in terms of compliance.
Ella Cheong: Clients and law firms work more closely than ever before on setting up budget plans. Law firms cooperate with long-term clients for a more flexible mode for saving costs, and assist clients to prioritise fields and areas of work, and offer discounts where relevant, eg, for bulk filings.
Now, clients with a global trademark portfolio more and more often grant outside counsel access to the clients’ (internal) trademark databases in order to involve outside counsel in making entries and keeping information in such databases up to date. Some clients also involve outside counsel in making entries in their internal budgeting systems with book-keeping requests.
Cynthia Rowden: Relationships have changed in ways that reflect the changing roles of in-house counsel. In-house counsel are much more experienced in specialised areas of the law, busier, and more directly involved in business decision-making. Contact with them needs to be focused on getting to the heart of the decisions and advice they must give to their in-house clients as quickly and accurately as possible. Much of the routine work under their control is delegated to paralegals, and their skills have increased tremendously. It is critical to develop close working relationships with all client contacts.
There is more attention to accurate and fully detailed billing, and also much more encouragement of special billing rates, with agreed discounts and/or fixed fees. Large projects often have agreed budgets. All of these ultimately mean that law firms have to be more efficient.
Firm models
Who’s Who Legal: In your opinion, are there any benefits conferred to the lawyer who is part of a full-service firm, as opposed to an intellectual property boutique firm? Which model do you believe is more effective, where this practice area is concerned?
Iris Quadrio: Our firm was originally founded as a patent and trademark agency but then extended its activities to include the provision of legal services. The IP group, which still prides itself upon having been the starting point of our firm, remains a core area and benefits enormously from the expertise of other practice groups when advice on other aspects of law is needed. In our opinion this balanced format, making the most of an IP boutique firm and of a full-service law firm, has proved to be effective and of great help to clients.
Cynthia Rowden: At the risk of being biased by my membership in a IP boutique, my feeling is that most IP boutiques offer a depth of experience in IP that very few general firms can match. They also have systems and staff devoted to maintenance of IP records, which means specialised information and skills that have not evolved from other practice areas. As a lawyer who has spent her career in an IP specialty firm, I feel that I benefited enormously from the education and experience of others in the firm, and that it would have been difficult to learn as much, as quickly, and also be exposed to a myriad of difficult and interesting IP issues in a general firm.
Ella Cheong: Full-service firms attract clients by virtue of their diverse practice in various fields of law, especially for commercial transactions (in particular mergers and acquisitions) which usually do include some IP issues. However, the lawyers involved do not generally have in-depth experience of, and thus may not appreciate, all such IP issues, particularly in light of the very many aspects covered in such commercial transactions.
On the other hand, IP boutique firms have much experience in handling all kinds of IP matters, especially those involving complex IP issues. Such firms usually have mature management and computer data systems to ensure deadlines are not missed.
Fabrizio Jacobacci: We have been for a long time an IP specialty boutique, but in January 2009 we expanded our range of services to corporate, M&A and commercial law and litigation. In doing so, however, we preserved IP as the main focus of the firm and non-IP accounts today for about 20 per cent of the firm’s global business. We did expand to those areas of law because we thought (and think) that it would be beneficial to the IP practice in that it would offer IP lawyers the possibility to rely on the expertise of other specialised lawyers whenever there is a situation requiring skills and experience in more than one area of law, as is often the case in transactions involving IP rights. At the same time, by maintaining the emphasis on IP the firm should be able to avoid the main risk of large multi-practice firms, namely the loss of the best IP talents who rarely fit into large (bureaucratised) firms. In the end I think that between the two extremes, a pure IP firm and a large multi-practice firm, there is room for compromise and that such compromise can be the best of all options.
Regulatory developments
Who’s Who Legal: Have you seen any significant new regulatory changes in your jurisdiction, or are there any impending changes soon to come? What challenges are presented when representing a client with a multi-national presence in terms of inter-jurisdictional regulatory variations?
Ella Cheong: The China Trademark Law is being revised but not expected to be finalised until 2011/12. It is envisaged, inter alia, that multi-class filings may become available under the new law.
The biggest challenge is to let clients fully understand and agree to some proposals which protect their interests to the utmost extent under the local laws, but may be different from those under the laws of the home countries of the clients, eg, in China there are sub-class headings, even though China has adopted the Nice Classification of Goods/Services, which means clients may need to consider filing several applications in the same Class.
Cynthia Rowden: The Canadian Intellectual Property Office has launched numerous initiatives in the last few years, and plans many more in the upcoming years, to – in their words – modernise Canadian IP laws and bring them more into line with international practice. These changes have impacted practice in the trademark and patent areas, and new legislation is being proposed to significantly change copyright and trademark laws.
In terms of representing clients with inter-jurisdictional issues, the key is to deal with the most knowledgeable associates, to ensure that local laws are well known and advice is given as soon as possible. Regardless of how much harmonisation we see in laws and regulation there will continue to be local differences, and clients are best served by dealing with local experts.
Iris Quadrio: While no formal harmonisation process is underway in Latin America, it is possible to discern a trend towards common basic protection. This can be seen through the formation of trading blocs, the influence of minimum standards required by some of the free trade agreements, and the meetings between the directors of the different PTOs.
Almost all Latin American countries are party to TRIPs, which specifically provide for the existence of border measures, but a trend towards harmonisation also seems to be arising from the national implementation of TRIPs provisions.
In this scenario, the biggest challenge is still to understand how each national system works and this can be achieved through a network of reliable associates in each country. In order to handle the matters regionally, services provided by networks of correspondents constitute a valuable tool to help companies manage their trademark portfolios.