Q: Can you tell us about your trademark practice team (size, practice focuses, key individuals, etc)?
A: We are an independent trademark agency that started eight years ago after Bas Kist, Alice Slabbaert and I left Shield Mark, the company that we owned previously. Today, we have a relatively small but strong and highly experienced team of 30 people. Key individuals include Maria-Gemma Huijnen (also partner), Miriam den Boogert, Klaas Beks, Kayin Pang and Eline Heijboer, all of whom lead their own practice and work for a variety of clients with large international portfolios, such as Heineken, Tommy Hilfiger, Booking.com, Talpa Media, Randstad, Aegon and many others. Their efforts, and those of their respective teams, are the basis of our success and of this prize.
Q: What are the keys to success for your trademark team?
A: “Big enough to cope, small enough to care”, as we say! We cherish the relatively small team that we have. It enables us to be flexible and to keep our eye on the ball with regard to the things that really matter to the client. We believe in a personal approach, short communication lines, speed, efficiency and accessibility. We train our people to be on point and to give bold advice with a clear direction. As a result, we consider high-level knowledge to be crucial and seriously invest in it.
Next to the experienced attorneys, our team consists of highly experienced staff. In addition, our support teams have more than earned their credentials in the IP sector. This team of experts allows us to offer our clients a high standard of advice – something which international trademark law now demands.
Last, we just try to have fun! I think this mix of aspects is the key to our success.
Q: From a firm perspective, what was your highlight of 2018?
A: We had several; however, one highlight was certainly that we started working for Tommy Hilfiger worldwide this year. As with several other larger portfolios, managing this portfolio involves almost all aspects of our profession. Very interesting.
Q: Over the past couple of years, there has been a swathe of changes to practice as a result of the European trademark reforms. What impact have these had on your team and its strategic approach to trademarks?
A: The number of EU oppositions and cancellations filed by or against our clients is increasing enormously. Over the past few years, we have seriously invested time and money to be able to handle these matters in the best and most cost-efficient way. Some other advisers approach these procedures as if they are court cases – and charge the fees to match. In our opinion, this is unnecessary, since they are administrative procedures which are processed by the EUIPO along clearly defined lines and should therefore be handled and charged correspondingly.
Another interesting development has been the introduction of new types of trademark in the European Union, as a consequence of eliminating the graphical representation requirement. This opens the door to all kinds of modern trademarks, such as motion marks, sound marks (other than music) and multimedia marks. We have filed several already. It will be interesting to see how the scope of protection of these marks develops.
Q: What challenges are being raised by clients most frequently at the moment?
A: The true clearing of a new mark remains an issue. Despite the efforts of the EUIPO, we still see that the EU register especially remains overcrowded. This, in a direct way, leads to difficulties in advising on the availability of a new mark. Indirectly, it also results in more unnecessary oppositions and cancellation procedures.
Further, a more managerial aspect is that larger clients especially are becoming more keen on having close control of their budgets. As with their trademark data, they prefer to have 24/7 insight on their budgets and spend costs. As we understand this demand, we have invested in direct accessibility of this information.
Q: If you could make one change to the trademark world what would it be?
A: I am a fan of the US classification practice and use-based protection of marks. If we could introduce this in Europe, it would – in my view – ultimately lead to a fairer and more workable system in which trademark protection is limited to goods or services for which a mark is really used. The use and acceptance of our broad classifications are a real pain to me. It would also lead to less complexity in relation to the clearance of marks and would decrease the amount of unnecessary oppositions and cancellation actions.
Q: AI has been a big talking point over the past year – what impact do you feel it will have on trademark attorney practices?
A: The power of artificial intelligence (AI) should not be underestimated. I anticipate that it will have a significant influence on our work in the near future – in a way, it already does. See for example Darts IP, which has developed into a big data provider that enables us to obtain and combine information in a new way. This has led to an enhanced way of advising in my view.
AI can be seen as a threat as it makes information and knowledge more readily available for end- clients. However, I see it as a positive development. It will enable us to advise on a higher level and in a more specific way, having access to all sorts of combined data. This counts, especially for agencies like us, which focus on knowledge-based added value. It can be of huge assistance not only to gather evidence or argumentation in, for example, oppositions and cancellations, but also to advise on the availability of new marks.
Q: Is the job of the trademark attorney becoming easier or harder – and why?
A: I would not say harder but more complex for sure. At the same time, it is more fun. We mainly work for clients with international portfolios. This means that we have to deal with all sorts of legal and trademark-admin aspects and accompanying changes, all over the world. This is challenging but also makes it interesting.
Over the past 20 years, our profession has changed from a job with a high administrative component to more legal advisory work. This has transformed the requirements for trademark attorneys.
Q: How different do you think the future trademark practice will be?
A: It is my view that trademark practice will change enormously in the (near) future on various levels. First, as I said, from a legal perspective, our practice is becoming more complex due to internationalisation and the constant flow of new (EU) case law. Second, the market itself is changing. The overlap with law firms is increasing and tech firms are entering our market with specific services. I anticipate that the relationship with our providers (eg, Compumark/Clarivate and Corsearch) will change, as they still have difficulties reaching their end consumers.
Most importantly, however, in my view, is the influence of AI and/or new technologies, and the uncertainty that goes along with this. Who knows whether we will be using Google, Alibaba or blockchain to file our applications in a few years? To manage this uncertainty is challenging and interesting. As a relatively small company and one that is on top of these developments, I am sure we have the flexibility to cope with these inevitable changes.
Q: Finally, what advice would you give to younger practitioners looking to pursue a career in trademarks?
A: As I said, our profession will without doubt look different in the future. New technologies and AI will assist us in a lot of old school prosecution work. While I believe that we will still manage portfolios and file and renew registrations, we will do so in a different way. Our real added value will be on a knowledge-based and strategic level. As a company, we also focus on these issues. So, as a young practitioner, if you like the true legal and strategic part of our work, there is still much fun to have in our profession. At the same time, you will need to click with the use of new technologies and have an eye for constant changes in this field.