27 Oct
2020

J A Kemp

J A Kemp

Q: What would you say is the one key factor that leads to success when managing a trademark filing practice?

A: Communication is critical when managing a team. An open door (or open-Zoom) policy is essential. Because our work is demanding and every client has different requirements, we must be able to talk freely. I want the team to both challenge views and ask for guidance. Open communication turns us into better advocates in the long term and makes our advice more consistent and thorough. Ultimately, an individual lawyer within the team needs to take ownership of a matter and independent thought will always be important. However, the ability to call upon a team of experts within the firm brings enormous benefits. My take-home messages to new trainees on arrival at the firm are these: seek guidance; ask questions; and challenge views where you have evidence to back up your own counterview. It makes for an excellent skill set, a great trademark lawyer and an enviable work product.

Q: You have offices in the United Kingdom, France and Germany. How will you approach the interplay between offices post-Brexit, with respect to representing UK clients at the EUIPO?

A: We have a substantial practice filing trademarks and designs at both the EUIPO and the UK Intellectual Property Office (UKIPO). I lead the EUIPO trademarks practice centred in our Paris office along with three resident partners. We have safeguarded our practising rights before the EUIPO and the European courts post-Brexit and our thriving Paris office has increased our continental European footprint for the firm as a whole. Our UKIPO practice is focused in our London, Oxford and Cambridge offices and has capitalised on the growth in domestic UKIPO filing work since the last recession. We are yet to see the full growth potential that will flow from the United Kingdom’s departure from the European Union at the end of 2020, but we know that we are well placed to serve all our clients’ long-term trademark and design needs in the United Kingdom, in addition to maintaining our busy EUIPO practice.

Q: How do you ensure the firm’s attorneys in different jurisdictions keep abreast of the latest developments at both EU and national level?

A: Technological change has brought many efficiencies in keeping up to date with changes in UK and EU law. When I started life in the profession, the UK Trademarks Act 1994 had just been introduced and we were a year away from the first Community trademark. Everything was on paper and national court decisions did not reach practitioners quickly. Roll forward 25 years and all the information we need is at our fingertips. Practitioners can instantly access official and private databases, publications and blogs that offer digestible information for busy lawyers. Because there is so much information and a need to react quickly, my firm has divided responsibility for all territories worldwide between individual lawyers. Each lawyer monitors changes as they occur in their territory. This committee of 20-plus lawyers meets monthly to plan changes to our procedures and disseminate important information to our lawyers and clients.

Q: What developments or cases should trademark practitioners be following with respect to the European trademarks landscape?

A: It is a very exciting time to be practising trademark law. We have some gifted minds within the profession and, coming from a common law jurisdiction, an appetite for case law development. Practitioners should be closely following Sky Limited v SkyKick UK Limited ((2020) EWHC 1735 (Ch)). This case is the latest in a line of authorities that has helped to shape filing behaviour before the EUIPO and the enforcement of rights post-registration; good faith and commercial intent is at the heart of it. There is a further case on the way (it might just be on my desk as I write this!) providing the next wake-up call to the profession.

Q: If you could make one change to the EU filing landscape, what would it be?

A: I am full of praise for the way that the EUIPO has worked with national offices to introduce change and harmonisation. Changes driven by the EU Cooperation Fund – on which I acted as an external adviser – have benefitted users of the system at EUIPO and national level. One quick and easy win, however, would be a system to tackle unpaid cost awards in contentious EUIPO proceedings. Clients and fellow practitioners alike share my frustration that this issue is not being addressed. The sums awarded are too small to fairly compensate the successful party. One solution would be to require any party launching an action or entering a defence to pay an extra sum as security against an adverse costs award. The EUIPO would hold all such sums on trust until the matter is finally determined. This would address the problem posed by the current low level of awards.

J A Kemp

14 South Square, Gray’s Inn

London WC1R 5JJ

United Kingdom

Tel +44 20 3077 8600

Fax +44 20 7430 1000

Web https://www.jakemp.com

James Fish

Partner