24 Sep
2021

GLP

GLP Intellectual Property Office

Q: You have a significant filing practice for trademarks and designs. How do you ensure that the firm is positioned to meet the varied filing needs of particular clients?

A: At GLP we are firmly committed to providing a service to our clients that always ensures the highest possible standard of quality. For us, this is an absolute must and our clients appreciate our style, which is not only tailormade but also focuses on an approach that we describe as partners sitting on the same side of the desk, while at the same time being able to listen and understand the client’s needs. We believe that it is also fundamental to understand the customer’s needs according to the strategic requirements of their business, not only the technical ones related to the IP world. Technology is certainly an important element, in fact we invest a lot to create proprietary platforms internally, to support our customers. In this way, we are able to provide a complete and precise service that allows us to give assistance in different business areas, from technology to clothing to food.

Q: In terms of the management of your trademark practice, what lessons have been learnt during the covid-19 pandemic?

A: The pandemic has certainly not been easy, but as is often the case, it is precisely in these difficult times that new opportunities and solutions emerge. This is what we believe has also happened in the delicate area of IP rights management. The consulting sector has always been characterised by the interaction between professionals and clients, with particular reference to trust and confidentiality of information. The immediate suspension of face-to-face meetings has led to us to new forms of communication that today are accepted, and indeed appreciated, because they allow us to be in constant communication with our clients. However, it remains clear that we are all waiting for a return to normality, hoping to meet our customers and partners in person again.

Q: What advice would you give young lawyers keen to develop a filing practice?

A: The world of intellectual property is pure passion and constantly updating. Any professional wishing to enter this field must be aware that they will always be subject to new stimuli from a wide variety of sectors. There is the need for a high level of preparation and to ensure that one keeps up to date with this evolving industry. Indeed, passion is not enough, it is essential to have knowledge of the regulations as well as a clear vision of the dynamics of the global market, which are always being updated. Last but not least, it is also important to have a predisposition and a particular sensitivity to some aspects and dynamics of marketing.

Q: What are the developments/cases that trademark practitioners need to be following with respect to the European and Italian trademarks landscape?

A: For a trademark practitioner, it is essential to know the historical decisions of the European and Italian offices, which constitute, even today, the foundations of the most recent case law. We refer to decisions that are milestones for a trademark attorney, such as Canon, Sabèl and Thomson Life, all cited and analysed in the EUIPO’s Trademark Guidelines. Such guidelines are also a fundamental instrument and constitute the main point of reference for all the European attorneys who want to ensure they have the latest information on the EUIPO’s examination practices and, indirectly, of the national offices.

A:recent interesting case is the General Court’s decision in Stihl (T-193/18), which clarifies the approach to colour marks and Article 4 of the EU Trademark Regulation. This decision is not a departure from the previous case law but clarifies the role of the description of the mark provided in Article 3(2) of the regulation, which may, for instance, define the subject matter of protection by specifying on which part of the product the colours will be applied.

Q: Finally, how do you see the EU trademark landscape changing over the next five years?

A: The number of trademarks registered in Europe is constantly growing and in view of the consequent crowding of the register, a tightening up at the EUIPO appears inevitable. Already, we have noticed the EUIPO’s trend to be strict in the application of principles and the examination of cases.

Another interesting aspect that we have noticed is the office’s increasingly pro-European approach, which on the one hand seems to give relevance to linguistic and cultural differences existing between all the EU member states, but on the other hand, under a more careful and more profound point of view, more and more attention is being paid to national European cultures. This approach may seem to fragment Europe into single nations, but in reality, it reveals an approach that is increasingly harmonised, and has the goal of sharing individual national principles.

GLP Intellectual Property Office

Via Luciano Manara 13

Milan 20122

Italy

Tel +39 02 5412 0878

Fax +39 02 5412 1214

Web http://www.glp.eu

Davide Luigi Petraz

Co-managing partner

[email protected]

Carmela Barilà

Attorney at Law

Orsola Grimani

Attorney at Law