You have lectured on a wide array of IP topics and authored a significant number of legal publications. How have your academic experiences contributed to your professional development?
Publications often spring from a personal motivation to get to the bottom of a certain subject. When you are working for demanding clients who often have pressing matters, it is nice to have one or two projects a year that have no or very comfortable deadlines. I honestly cannot say whether it truly adds to your career; if you do not like to write, you will probably never do it well, but you might still be great in the courtroom. What I really believe, however, is that explaining highly complex legal issues to people at a less specialised level – as is the case for my students – is very valuable and keeps you connected to how somebody in marketing or sales will perceive a certain issue. Questions posed by marketing students doing an LLM are often the same as those that their peers in the corporate marketing departments have about IP law.
Having worked at a magic circle firm before becoming the founding partner of an IP boutique, what would you say are the main differences between managing trademark practices in boutiques and larger firms?
Let me start by saying that I very much cherished my experience in a magic circle firm. They are great places to learn and work, yet it is equally fair to say that very rarely does intellectual property play an overly prominent role in the overall set-up of a leading global law firm. This is understandable; litigation creates conflicts and conflicts are unhealthy for transaction-driven corporate firms, which the magic circle members usually are. As an IP-only firm, we see some transactional work, but the bulk of our work is IP litigation and strategy. Apart from that, it would be fair to say that we are a bit of an atypical boutique as our clients are rather large, mostly foreign corporations and thus the usual magic circle clientele. Most of our work is English and many litigation projects play in more than one jurisdiction, which we often coordinate.
When representing brand owners across a range of industries, how do you stay up to date on developments in multiple markets?
Conferences and frequent interaction with my international network of colleagues and clients certainly help, as well as new classes of tech-savvy and innovation-friendly students who occasionally explain to me that what I considered a cool new thing was neither the one nor the other.
As someone who is frequently commended for being a skilled litigator, what are the key factors for international brand owners to consider when bringing disputes before the EU courts?
From the perspective of, say, a US client, EU proceedings are fairly quick and economical. No jury trials, no discovery and – at least in some countries, including Germany – an efficient and reasonably quick way to deal with the docket. German courts also tend to grant preliminary injunctions in a short timeframe, even ex parte, despite some restrictions imposed by the Constitutional Court lately. When organising multi-country litigations, an injunction in Germany has often been the trigger for settling the whole affair, which is substantially cheaper than starting a full-blown trial in a somewhat ‘slower’ jurisdiction. Although EU trademark law is harmonised, it is important to note that each country has some peculiarities, be it due to procedural points or national court traditions. France, for example, has traditionally been a favourable plaintiff location for luxury fashion brands. Even within one country, the courts take different approaches, so a skilled litigator should advise the client carefully where to commence which part of a litigation project.
Finally, what advice would you give to younger practitioners looking to pursue a career in intellectual property?
First of all, I would commend them as they have picked a truly rewarding, interesting field of work. Second, I would say choose a great place to learn and gather experience abroad. And remember: the IP community is a very international, yet closely connected group. Get involved. Join INTA, the American Intellectual Property Law Association and the German Association for the Protection of Intellectual Property, to name just a few. If you are good (and fun), we will hire you.
Peter Ruess is a partner at ARNOLD RUESS and a professor of law at the International School of Management in Dormund, Germany. He studied law in Bayreuth, Germany, Vienna, Austria and Washington DC where he obtained an LLM in IP law and interned with the US Court of Appeals for the Federal Circuit. Prof Dr Ruess has authored and co-authored more than 70 publications and represents mid-sized to large corporate clients in trademark and unfair competition matters.