WTR Industry Awards 2015

The WTR Industry Awards 2015 – to be presented at an exclusive ceremony at the San Diego Natural History Museum, timed to coincide with the 137th International Trademark Association annual meeting – honour leading trademark teams and individuals across a range of sectors. We reveal the shortlist

WTR Industry Awards 2015

Asia-Pacific Team of the Year

Alibaba

BDO Unibank

GlaxoSmithKline

Hitachi

Sony Corporation

sponsored by

Marks%20%20Clerk%20hi-res%20logo.jpg

Europe, Middle East and Africa Team of the Year

BMW

British Sky Broadcasting

GlaxoSmithKline

Mondelēz International

Red Bull

sponsored by

Zivko%20Mijatovic%20%26%20Partners.jpg

Latin America Team of the Year

Cencosud

Grupo Bimbo

Grupo Televisa

PepsiCo

The National Federation of Coffee Growers of Colombia

sponsored by


North America Team of the Year

Apple

Kate Spade & Company

MasterCard

Phillips 66

World Wrestling Entertainment

sponsored by

Fish%20logo.jpeg

Fashion, Cosmetics & Luxury Goods Team of the Year

Chanel

Kate Spade & Company

L’Oréal

Lacoste

Richemont

sponsored by

Venable.jpg

Financial & Professional Services Team of the Year

Banco Bilbao Vizcaya Argentaria

BDO Unibank

MasterCard

Prudential Financial

Visa

sponsored by

68099.jpg

Food, Beverages & Tobacco Team of the Year

E & J Gallo Winery

PepsiCo

Podravka

Starbucks

Yum! Brands

sponsored by

Beau%20De%20Lomenie%20logo.jpg

Healthcare & Life Sciences Team of the Year

Eli Lilly and Company

Gilead Sciences

GlaxoSmithKline

Merck & Co

Novartis Pharma

sponsored by

68088.jpg

Household & Consumer Goods Team of the Year

Inter IKEA Holding Services SA

Johnson & Johnson

Procter & Gamble

The 3M Company

Zwilling J A Henckels

sponsored by

ARS-Patent.jpeg.JPG

Internet & Telecommunications Team of the Year

Alibaba

GoDaddy

Google

Telefónica

Unify

sponsored by

Fieldfisher-logo-CMYK.jpg

Not-for-Profit Organisation Team of the Year

ALS Association

American Red Cross

Association for Supervision and Curriculum Development

Federation of the Swiss Watch Industry FH

National Association of Realtors

sponsored by

DWT.jpeg

Software & Online Services Team of the Year

eBay

Google

King Digital Entertainment

SAP

Twitter

sponsored by

68064.jpg

Sports, Entertainment & Media Team of the Year

adidas

Electronic Arts

FIFA

Nike

World Wrestling Entertainment

sponsored by

Balder%20IP%20Law%20logo.jpg

Technology & Consumer Electronics Team of the Year

Intel

Microsoft

Motorola Mobility

SanDisk Corp

Western Digital

sponsored by

68053.jpg

Travel & Leisure Team of the Year

American Airlines

Expedia

Hard Rock International

InterContinental Hotels Group

LoyaltyOne

sponsored by

68046.jpg

Vehicles & Transport Team of the Year

BMW

Caterpillar

Chrysler

Jaguar Land Rover

Toyota Legal One

sponsored by

68041.jpg

In-house Counsel of the Year

Sophie Bodet, GlaxoSmithKline

Lauren Dienes-Middlen, World Wrestling Entertainment

Colm Dobbyn, MasterCard

Richard Graham, Richemont

Karen Law, Alibaba

sponsored by

68035.jpg

Lifetime Achievement

Barbara Kolsun

Asia-Pacific Team of the Year

Sony Corporation experienced something of an annus horribilis in 2014, and in September announced it was increasing its forecast annual loss to an eye-watering $2.14 billion. Despite the adverse conditions, however, its trademark function “is doing a great job maximising the value received from outside counsel while still obtaining great results”. Financial considerations of a different kind prompted many of Alibaba’s nominations: the department assisted the company in preparing for its record-breaking listing on the New York Stock Exchange, both ensuring that the company’s own IP house was in order and striving to tackle counterfeiting on its platforms. At BDO Unibank, support for the company’s wider business performance was also in evidence, as the team ramped up protection for a growing portfolio in collaboration with other stakeholders. The GlaxoSmithKline trademark function earned plaudits for its joined-up approach to anti-counterfeiting, with the successful introduction of unique serial numbers to the packaging of all products on the Essential Drug List – which facilitate electronic monitoring to ensure patient safety – to be rolled across additional products. Meanwhile, Hitachi’s trademark experts impressed for their close partnerships with external counsel, which enable them “to achieve the broadest protection of its assets at a reasonable cost-benefit ratio”

Previous winners

2014: BDO Unibank
2013: Billabong International
2012: Gucci Group
2011: Acushnet Company
2010: Nokia
2009: Ferrero
2008: Yamaha
2007: Starbucks


Europe, Middle East and Africa Team of the Year

Efficient, constructive relationships with outside counsel were the drivers behind many nominations in this category. Red Bull’s in-house team, for example, was hailed as “very clear on protection and enforcement targets, which helps to focus efforts and shows up clearly in their always-to-the-point’ questions”. Likewise, BMW’s Jochen Volkmer earned glowing reports as an “elite trademark and design counsel” whose “wise guidance, professional communication and creative but considerate thinking have impressed”. Meanwhile, the trademark function at British Sky Broadcasting has worked tirelessly and “very successfully to make SKY an extremely strong brand not only in the UK, but in many EU countries and worldwide”, and to scotch potentially confusing third-party registrations. The “top-tier” team at GlaxoSmithKline is similarly praised as “both extremely diligent and efficient. They often face difficult issues – not only legally, but politically – but they are well familiar with the issues and know how to navigate through them and prioritise matters to achieve the desired outcome”. Finally, following the spin-off of Kraft Foods from Mondelēz International, the trademark division has helped to orchestrate a number of high-level trademark transactions.

Previous winners

2014: BMW
2013: GlaxoSmithKline
2012: Nestlé
2011: Coca-Cola
2010: Pernod Ricard
2009: adidas
2008: Philips
2007: Richemont


Latin America Team of the Year

Seamless regional coordination was a recurring theme among the shortlisted nominees in this category. Cencosud, for example, is Chile’s largest retailer and the third largest listed retail company in Latin America; as such, its trademark department “superbly handles the whole company’s IP assets in five countries” (Argentina, Brazil, Chile, Colombia and Peru). Among the “excellent team of lawyers” at PepsiCo, Latin American senior IP counsel Sergio Barragan has “a great capacity to coordinate the interests of the company across the region, demonstrating knowledge of the particularities of each country and combining both the needs and expectations of the company when deciding on the best course of action”. Meanwhile, Camila Santamaria of The National Federation of Coffee Growers of Colombia, was described as “outstanding” in her approach to portfolio management; her efforts have “greatly contributed to ensuring that the organisation’s IP strategy continues to stand out at a worldwide level”. Another star performer in this respect is the “incredibly smart” Martha Landeros at the Grupo Bimbo, acclaimed for masterminding the company’s international trademark strategy and taking its IP portfolio “to new levels of protection”. Finally, Grupo Televisa has responded nimbly to changing regulatory and legal environments, revamping internal processes to align them with recent telecommunications reforms in Mexico.

Previous winners

2014: PepsiCo
2013: Grupo Televisa
2012: PepsiCo
2011: Grupo Televisa
2010: Sanofi-aventis
2009: Philip Morris
2008: Petrobras
2007: Microsoft


North America Team of the Year

The team at Apple has the formidable task of protecting the world’s most valuable brand and doing so under an intense global spotlight; as such, innovative filing strategies that safeguard marks both existing and new (in the case of Apple Watch, while also preserving product secrecy) have become their calling card. Thanks to their diligence and creativity, the Apple brand rose from $104 billion to $128 billion in 2014. Kate Spade & Company has also expanded its products, services and online and digital offerings, with the team “expertly managing this growth with precision and foresight”. The trademark function at MasterCard impressed for its ability to “protect its brands in a cost-effective and efficient way”, while also assisting other rights holders in their battles against online counterfeiters. At World Wrestling Entertainment, it is the consistency of the team’s approach that draws admiring glances, “whether it be in relation to the clearance and prosecution of their trademarks, the anti-counterfeiting programmes they run or the amount of material they review in support of WWE’s numerous commercial activities”. Meanwhile, Phillips 66 division head Craig Stone has been rewarded for his stellar performance this year with inclusion on Houston Business Journal’s ‘40 under 40’ list of the best and brightest young professionals.

Previous winners

2014: SanDisk Corp
2013: Beam Inc
2012: Microsoft
2011: Google
2010: Warner Bros Entertainment
2009: E I du Pont de Nemours and Company
2008: Google
2007: Intel


Fashion, Cosmetics & Luxury Goods Team of the Year

Unsurprisingly, anti-counterfeiting is a primary focus for the teams in this category, in terms of both physical production and channels to market. Nominees highlighted Chanel’s “efficient and innovative approach to the management of counterfeits sold on platforms”, with Yann Romé proving “one of the most creative legal counsel for anti-counterfeiting issues on the Internet”. Richemont also hit the headlines for its activities in the online space, securing a landmark High Court judgment that rights holders can seek court orders to block websites that are structured to infringe their trademark rights by selling counterfeit goods online. Under the “outstanding leadership” of Geri Lynn Elias, the team at Kate Spade & Company has ably kept pace with the development of one of the fastest-growing fashion companies, effortlessly handling forward-looking registration and clearance requests alongside international enforcement and anti-counterfeiting efforts. José Monteiro also impressed with his ability to juggle multiple IP-related tasks across a range of brands at L’Oréal; his decisions are informed by a “strong business-oriented perspective”. On top of dealing with day-to-day IP issues for “one of the most sought-after brands for counterfeiters”, the Lacoste trademark department successfully retuned its structure to ensure it can play a key role across multiple brands following the company’s acquisition by the Maus Frères group.

Previous winners

2014: Avon
2013: Christian Louboutin
2012*: adidas
2011*: Limited Brands
2010*: Coty
2009*: Gucci
2008*: adidas

(*Award titled ‘Fashion & Luxury Team of the Year’)


Financial & Professional Services Team of the Year

An ambitious expansion plan has secured Spanish bank Banco Bilbao Vizcaya Argentaria a foothold in 40 countries around the work – a global presence which underpinned its decision to establish its own top-level domain (TLD). The trademark function has been vital in progressing the ‘.BBVA’ application. The team guarding the portfolio of Philippines-based BDO Unibank has a similarly international outlook, scaling its efforts to match the company’s global expansion. At MasterCard, the trademark division garnered praise for its “real leadership in helping other IP owners to protect their rights against online counterfeiters”, with Colm Dobbyn singled out as “an outstanding legal professional with the highest ethical standards, a strong work ethic, impressive intellect and significant expertise in the fields of trademark and copyright law”. Visa’s Denise Yee is another elite performer: “meticulous” in approach, she is “amazingly aware of trends, issues and legal changes affecting her portfolio around the world”. At Prudential Financial, Dolly von Hollen shines for her “exceptional subject-matter expertise, dedication, collegiality and project management skills”.

Previous winners

2014: American Express Marketing & Development Corp
2013: Visa
2012: MasterCard
2010: MasterCard
2008: MasterCard
2007*: Visa

(*Award titled ‘Business-to-Business Team of the Year’)


Food, Beverages & Tobacco Team of the Year

“I have had the privilege of representing many of the world’s best known brands as outside counsel and worked with many in-house teams, and this team is certainly one of, if not the best I have worked with,” enthused one respondent about the team at E & J Gallo Winery. The Yum! Brands trademark function – which has household-name marques such as KENTUCKY FRIED CHICKEN, PIZZA HUT and TACO BELL under its stewardship – was tipped for its astute management of licensees. Starbucks has won fans through its “practical but creative approach to portfolio management and enforcement”, and its commitment to taking decisive action where necessary. “A well-oiled machine”, is the verdict on the PepsiCo division: “Although they sit in diverse locations, the operation of the team is seamless, with consistent approach and quality.” “One of the most active IP lawyers in the Croatia and Balkan region”, Podravka’s Diana Petričević has built international networks and strategic alliances for the benefit of her company while also spearheading continued professional education and development initiatives for her colleagues.

Previous winners2014: Diageo

2013: Jack Daniel’s Properties
2012: Mars
2011: Coca-Cola
2010: Pernod Ricard
2009: Diageo
2008: Anheuser-Busch
2007: Coca-Cola


Healthcare & Life Sciences Team of the Year

For trademark teams in this category, speed is often of the essence – in terms of both bringing products to market and building brand identity to maintain competitive edge – but their job is complicated further by the complex web of regulations that governs the sector. With “the skills and energy necessary to handle any situation in an exceptional manner”, each member of the team at GlaxoSmithKline “is trusted to do their job at a consistently high level, and they can be counted on for results”. At Gilead Sciences, Gretchen Stroud “manages with great competence and accuracy extremely complex clearance projects within very short timeframes”. Meanwhile, Eli Lilly and Company exemplifies anti-counterfeiting best practice, securing buy-in to its initiatives from consumers and governments alike. The Novartis Pharma AG team was praised for its “considerable grasp” of both its portfolio and the company’s wider commercial goals, showing “immense leadership” in directing strategies to fulfil them. Finally, last year Merck & Co sold its consumer care segment to Germany’s Bayer AG for more than $14 billion, a deal on which the trademark team acted in a “truly impressive” manner.

Previous winners

2014: GlaxoSmithKline
2013: Merck & Co Inc
2012*: Allergan
2011*: Sanofi-aventis
2010*: Eli Lilly and Company
2009*: GlaxoSmithKline
2008*: GlaxoSmithKline
2007*: GlaxoSmithKline

(*Award titled ‘Pharmaceuticals Team of the Year’)


Household & Consumer Goods Team of the Year

Thought leadership among the wider IP community was a common trait highlighted in relation to the teams nominated in this category. Johnson & Johnson’s David McDonald was identified as a forward-thinking International Trademark Association (INTA) board member; while Procter &Gamble’s Deborah Brincat impresses for her performance on INTA’s Trademark Office Practices Committee, where “she has almost a dozen sub-committees to manage – something she does exceedingly well”. The professionals at Inter IKEA Holding Services team were likewise hailed as “leading lights in advancing trademark law internationally, especially in Europe, through the contributions and positions they take through organisations such as INTA”. Meanwhile, the team at Zwilling J A Henckels garnered nominations for its sophisticated understanding of the interplay between legal and business concerns, “infusing the commercial expectations of the company into the handling of trademark conflicts, and thereby upholding both brand integrity and the value of the company’s marks”. The “outstanding” trademark division at 3M Company – which oversees instantly recognisable marks such as POST-IT and SCOTCH – handles the “unique and persistent” challenges that the company faces with aplomb.

Previous winners

2014: General Electric
2013: Inter IKEA Holding Services SA
2012*: Coty
2011*: Procter & Gamble
2010*: L’Oréal

(*Award titled ‘Household & Cosmetics Team of the Year’)


Internet & Telecommunications Team of the Year

Many players in the online space are tasked with protecting not only their own valuable brands, but also those of others. In 2014 Google continued to play a central role in the debate over search engine liability: it secured an Argentine Supreme Court of Justice ruling that search engines may be held liable for third-party content only if they fail to remove such content after having been requested to do so, either by the courts or through a private request. The complaints system implemented by GoDaddy has won it a fan in the shape of the Electronic Frontier Foundation, which commended its documentation of trademark dispute processes. Meanwhile, Alibaba has shown a flair for turning lemons into lemonade: a previously adversarial relationship with brands under the Kering umbrella – including Gucci, Balenciaga and YSL – has evolved into a valuable alliance in its anti-counterfeiting campaign. The team at Unify was praised for its management of the Unify identity since the 2013 rebranding of Siemens Enterprise Communications; while Telefónica has risen to the “challenge of managing a difficult brand (O2) and trying to maintain its value and protection as the scale of its use decreases”.

Previous winners

2014: Unify
2013: CenturyLink
2012*: Amazon.com
2011*: Google
2010*: Research In Motion
2009*: Microsoft
2008*: eBay
2007*: Google

(*Award titled ‘Internet & Online Services Team of the Year’)


Not-for-Profit Organisation Team of the Year

The shortlist in this category serves as a great illustration of the diverse responsibilities that trademark counsel are tasked with. Representing an entire industry, The Federation of the Swiss Watch Industry ran a number of key anti-counterfeiting initiatives during 2014: its efforts at the Brazil World Cup, for example, led to the seizure of almost 7,500 timepieces. The ALS Association was behind one of the most phenomenally successful viral marketing campaigns ever – the Ice Bucket Challenge – but also had to grapple with negative fallout relating to ownership of the concept. In close partnership with other internal stakeholders, the trademark team at The National Association of Realtors has been busy preparing for the launch of ‘.realtor’, making it the first member association to secure a TLD for exclusive use by its members. The American Red Cross is another player which is actively engaged with the Internet Corporation for Assigned Names and Numbers, with its marks at the centre of the debate on protection for non-governmental and intergovernmental organisations. Finally, the “excellent” Association for Supervision and Curriculum Development team continues to impress for its adroit handling of a portfolio that is used not only by the organisation itself, but also by stakeholders among its community of 56 affiliate organisations.

Previous winners

2014: The Association for Supervision and Curriculum Development
2013: Association of Medical Colleges


Software & Online Services Team of the Year

Ensuring watertight protection for growing portfolios is top of the agenda at many of this year’s software and online services nominees. eBay’s inexorable rise to dominance is reflected in its ever-expanding global trademark and domain properties; the team earned glowing reports for its “continued dedication and extraordinary ability in managing such a large and diverse global portfolio”. It is a similar story at Twitter, where the team has created bespoke strategies to ensure that its portfolio scales with the company. While King Digital Entertainment may be best known for its addictive Candy Crush title, it offers almost 200 games serving 356 million average monthly unique users, adopting an astute approach to brand protection in what one respondent described as “an industry which is historically very anti-IP”. In addition to dealing with new marks, one of the victories that Google recently chalked up came in Elliot v Google Inc, in which it successfully defended its mark against a genericness claim; the judge held that although consumers use ‘Google’ as a verb to mean using any internet search engine, GOOGLE is a valid trademark because the “primary significance” of the mark to consumers is Google Inc’s internet search engine. Meanwhile, enterprise application software specialist SAP has enlisted consumers as its allies in the fight against brand misuse, using its web presence to offer clear guidance on permissible use of its trademarks.

Previous winners

2014: eBay
2013: Twitter
2012*: Xerox Corporation
2011*: Microsoft
2010*: Microsoft

(*Award titled ‘Technology & Software Team of the Year’)


Sports, Entertainment & Media Team of the Year

The sporting calendar saw FIFA take centre stage in 2014, “creating and carrying out an outstanding brand protection programme with regard to the 2014 World Cup in Brazil” to ensure that the tournament did not make headlines for the wrong reasons. Tournament sponsor adidas also earned kudos for its global anti-counterfeiting efforts: the extent of the problem it faces is illustrated by its position among the top five most counterfeited brands by number of customs cases. Top of this table is Nike, whose trademark team has forged shrewd partnerships with other business units to enhance the profile of Nike-branded teams and athletes at major sporting events across the globe. With its content broadcast in more than 150 countries, World Wrestling Entertainment is another sporting franchise with global interests, requiring a big-picture approach to rights management. Executing “at a truly amazing rate”, Electronic Arts consistently finds itself at the cutting edge of issues in IP and technology, whether centring on parody, fair use or enforcement.

Previous winners

2014: Rovio Entertainment
2013: IBML
2012*: Time Warner
2011*: Sony Ericsson
2010*: Nokia
2009#: Playboy
2008#: Viacom
2007#: Warner Brothers

(*Award titled ‘Media & Telecommunications Team of the Year’)

(#Award titled ‘Entertainment & Media Team of the Year’)


Technology & Consumer Electronics Team of the Year

This is another category in which counterfeiting is a predominant concern. Western Digital earned praise for its “cutting-edge, creative and innovative strategies to combat counterfeiters and infringers in all regions of the world”, making an important contribution to “brand equity and the bottom-line balance-sheet value”. SanDisk is also cracking down on the problem, having successfully applied for action against traders in India via a John Doe injunction (more commonly used to tackle movie piracy). Meanwhile, Intel remains “one of the most professional trademarks teams worldwide, focusing on solving matters quickly, effectively and, if possible, in an amicable manner”. At Microsoft, Elena Grimme was hailed for the seamless way in which she took over as head of the trademark group at a time of change for the company. “She has made a huge impact within the company while maintaining her presence within the global trademark industry, lending her voice to policy issues,” observed one respondent. It has also been all change at Motorola Mobility, where the trademark team played a crucial role in the transfer of the company’s ownership to Lenovo in October 2014.

Previous winners

2014: Apple
2013: Honeywell International
2012*: Intel
2011*: Apple
2010*: Apple
2009#: Intel
2008#: Apple

2007#: Nokia

(*Award titled ‘Consumer Electronics Team of the Year’)

(#Award titled ‘Household & Electronics Team of the Year’)


Travel & Leisure Team of the Year

The travel sector is an intensely competitive and complex industry which to operate at the best of times. Having grappled with the additional challenge of a recent bankruptcy, the American Airlines team won plaudits for its in-depth industry expertise. North of the border, LoyaltyOne, the exclusive Canadian master licensee of the AIR MILES marks, was tipped for its successful development of the brand into a judicially recognised family of well-known marks in Canada. Elsewhere, Expedia “manages a broad portfolio of trademarks and domain names, and the associated global enforcement of such intellectual property, with a streamlined, highly effective team”. With Hard Rock International operating some 197 venues in 62 countries, the task facing the trademark function is similarly extensive – but one which it rises to with aplomb. At InterContinental Hotels Group, which has nine hotel brands in its portfolio, Carolyn Dinberg is a consummate brand ambassador.

Previous winners

2014: Accor
2013: Starwood Hotels & Resorts
2012*: Saban Brands
2011*: FIFA
2010*: MEGA Brands

(*Award titled ‘Entertainment & Leisure Team of the Year’)


Vehicles & Transport Team of the Year

China has proved a happy hunting ground for many of the nominees on the Vehicle & Transport shortlist in recent months. Close ties forged with counsel on the ground are paying handsome dividends for the Chrysler teamin protecting iconic marks such as CHRYSLER, DODGE and JEEP (which was recently recognised as a well-known trademark). BMW has also leveraged its well-known status in a range of disputes in China to superb effect; while a joint venture with Chery Automobile has yielded Jaguar Land Rover its first full overseas manufacturing plant in China. At Toyota, meanwhile, Christine L Lofgren garnered warm reports for her “awesome ability to analyse and assess legal matters – before most people can read about an issue, she’s already digested it and has recommendations”. The team at Caterpillar has proved itself adept at securing protection for trade dress elements, then cannily using these rights to fight third party-infringement across the globe.

Previous winners

2014: Nissan Motor Company
2013: Ford Global Technologies LLC
2012: BMW
2011: ABRO Industries
2010: Harley-Davidson
2009: BMW
2008: Harley-Davidson
2007: DaimlerChrysler AG

In-house Counsel of the Year: the nominees

 

Sophie Bodet, GlaxoSmithKline

Sophie%20Bodet%20original%20picture.jpg

Dispersed around the globe, the legal professionals at GlaxoSmithKline have a heavy wordload to coordinate between them, but they meet this challenge with relish under the “impressive” leadership of vice president and head of global trademarks Sophie Bodet: “No matter how complex a case is, the team is equipped with the skills and energy necessary to handle any situation in an exceptional manner.” Bodet’s stock has risen further through the significant contributions she has made to the industry through her presidency of the Pharmaceutical Trademarks Group.

Lauren Dienes-Middlen, World Wrestling Entertainment

Lauren%20Middlen.JPG

As vice president, intellectual property at World Wrestling Entertainment, Lauren Dienes-Middlen is responsible for managing its international trademark portfolio, drafting and negotiating consumer product licensing agreements with more than 300 licensees worldwide and overseeing international anti-counterfeiting efforts. She won special plaudits for her effortless handling of myriad issues across multiple jurisdictions, informed by a sophisticated understanding of the nuances of local law and practice balanced with an intuitive appreciation of her business and its commercial needs.

Colm Dobbyn, MasterCard

Dobbyn_Colm_apr2011.jpg

Colm Dobbyn received nominations not only for his sterling efforts to safeguard MasterCard’s 15,000-strong porfolio, but also for his dedication to helping other IP owners to protect their rights against online counterfeiters, developing responsive solutions no matter what the complexity or scale of the challenge faced. “An excellent lawyer who looks at legal matters without losing the business perspective”, he “manages a very lean trademark team which carries the heavy responsibility of protecting the key brands of the MasterCard business across the globe, taking a proactive yet pragmatic approach in all cases”.

Richard Graham, Richemont

150315_Photo%20for%20RG%20Articles.jpg

Richard Graham, head of digital at Richemont International, oversees all digital legal matters across the group’s luxury brands, including Cartier, Montblanc and Alfred Dunhill. A notable victory last year was the landmark ruling in Cartier v BskyB, in which the High Court of England and Wales granted Richemont a blocking order requiring the country’s five largest internet service providers (ISPs) to prevent access to third-party websites advertising and selling counterfeit goods. This marked the first time that an application for a website blocking order against ISPs in order to combat trademark infringement has been allowed in the European Union, with Graham hailed as “the driving force” behind the decision.

Karen Law, Alibaba

Karen_Law_HR.jpg

No Chinese company attracted greater international attention last year than Alibaba Group, thanks to its record-breaking listing on the New York Stock Exchange. In the run-up to the IPO, Karen Law, Alibaba’s senior legal counsel, intellectual property, worked tirelessly to make sure that the company’s IP holdings were ready for the big day, ensuring that internal IP assets were well managed and that due diligence and IP clearance work was conducted across the entire corporate structure. In the meantime, there are the usual challenges of protecting 9,800 marks across some 150 jurisdictions – not to mention a 5,000-strong domain portfolio – to manage. Her role also involves close interaction with other brands, in a bid to thwart infringers and counterfeiters on the Alibaba platforms.

Previous winners

2014: Jerry Xia, Honeywell International
2013: Thomas LA Perle, Apple
2012: Russell C Pangborn, Microsoft
2011: Dana Northcott, Amazon.com
2010: Janet Kobrin, Warner Bros Entertainment
2009: Vanni Volpi, Gucci
2008: Bruce Proctor, Diageo
2007: Richard Biribauer, Johnson & Johnson

Lifetime Achievement Award
BK_headshot%202.jpg

Barbara Kolsun is general counsel of luxury brand Stuart Weitzman, where she established the company’s first in-house legal department. However, this was not her first such creation – prior to Stuart Weitzman, Kolsun served as senior vice president and general counsel of Seven For All Mankind LLC, where she similarly instituted the company’s first internal legal function. These are just two key achievements across a distinguished career. Her experience as a professional singer and actress in the 1970s gave her first-hand insight into the need to protect artists’ and designers’ IP rights; while subsequent roles focused on the fashion and luxury sector. After clerking for the US Court of Appeals, Second Circuit and then working in private practice for 12 years, her in-house experience spanned stints at Kate Spade, WestPoint Stevens and Calvin Klein Jeanswear Co. Drawing on her experience in the sector, Kolsun co-conceived, co-edited and co-authored with FIT professor Guillermo Jimenez Fashion Law – A Guide for Designers, Fashion Executives, and Attorneys, the first textbook on fashion law. A frequent speaker on issues surrounding counterfeiting and trademark infringement, she has made significant contributions to the IP industry, chairing the board at the International Anti-Counterfeiting Coalition and acting as a consultant on intellectual property in Vietnam as part of STAR-Vietnam, a USAID programme. In addition to her current role, Kolsun is an adjunct professor of fashion law at New York University and Benjamin N Cardozo Schools of Law (previously serving as an adjunct professor at Fordham Law School from 1986-88 and 2011).

Previous winners

2014: Miles Alexander, Kilpatrick Townsend
2013: Kimbley L Muller, Shell Oil Company
2012: Alan Drewsen, International Trademark Association
2011: Jerome Gilson, Brinks Hofer Gilson & Lione
2010: Alexander von Muhlendahl, Bardehle Pagenberg Dost Altenburg Geissler
2009: Rhonda Steele, Mars
2008: Dee Ann Weldon-Wilson, ExxonMobil

Previous award recipients, not mentioned above, also include:
Energy, Chemicals & Utilities Team of the Year

2012: Chevron Corporation
2010: BP
2009: Chevron
2008: BP
2007: BP

China (Domestic) Team of the Year

2014: Alibaba

China (International) Team of the Year

2014: Honeywell International

Awards methodology

The WTR Industry Awards are designed to recognise the vital work performed by in-house trademark counsel, and to identify those teams and individuals that are performing their functions to the highest possible standards.

The list of nominees is the result of two months of extensive research. During that time, World Trademark Review surveyed its readers and selected members of the global trademark community for nominations in the geographical and industry categories listed, as well as for the individual In-house Counsel of the Year and Lifetime Achievement Awards. The World Trademark Review team analysed the recommendations, supplemented by its own extensive knowledge base, to draw up detailed shortlists featuring a number of outstanding candidates in each category.

The nominees and eventual winners have been selected on the basis of a wide range of criteria relating to excellence, such as active prosecution and/or enforcement of trademarks in the relevant jurisdiction or field of industry; successful portfolio exploitation and rationalisation; strong industry/regional expertise; determination and diligence to ensure efficient cooperation with outside counsel; global attitude towards brand expansion and protection; and quality of internal organisation and in-house processes. Nominees were judged on activities for the period from January 2014 to January 2015. While the results were based on extensive objective research, the final decisions remain the subjective opinions of the World Trademark Review team.

PLEASE NOTE: The nomination materials were submitted on a confidential basis, so this editorial overview of the shortlist conveys only information that is publicly available, non-sensitive or anonymously quoted. Therefore, this round-up should not be regarded as indicative of the breadth of nominations received or the specific reasons for nominees’ shortlisting.

Get unlimited access to all WTR content