You teach commercial mediation at the Panteion University of Athens and are a visiting lecturer on IP law. How has your academic career contributed to your professional development?
As my LLM and PhD were both in trademark law, I have studied trademark theory and case law for a number of years in significant depth. It is unique to be able to put into practice everything that you have learned on a theoretical basis. I believe that you must master this in order to provide the best practice, whether in litigation or counselling. There are a considerable number of trademark specialists in Greece, but none have undertaken the extensive study of trademark law that I have. This is why it is extremely important and rewarding to be able to mentor students and young practitioners, hear their ideas, thoughts and perspectives, which may bring a new angle to a given matter, and share my passion for trademark law.
You have also held a range of positions on various INTA committees. What role can – and should – the association play in shaping IP practice and wider social initiatives?
I am proud to have been involved in two of INTA’s most exciting committees: the famous, well-known marks committee and, up to now, the amicus committee. In both cases, I first participated as a member and then as chair of the European groups. Committee participation as well as committee leadership at INTA is an experience unlike any other. You work closely with some of the best practitioners in the world, exchange views, make your visions come true and contribute to policymaking and shaping trademark law. It is thrilling! Even as a student I was reading about the INTA amicus briefs that were filed before the Court of Justice of the European Union in landmark cases and formed trademark law as we know it; I could never have imagined that one day I would be writing one. When writing my PhD thesis on trademark dilution, among other things, I was reading articles in the Trademark Reporter written by eminent INTA members; again, I would never have dreamed that one day I would be collaborating with them.
As a seasoned litigator with an impressive winning track record, what key factors would you advise international brand owners to be aware of when bringing disputes before the EU courts?
Rule number one – tell your lawyer everything! The facts of the case are as important as the legal basis. It is only when your lawyer fully grasps the commercial aspects, politics and effects of the case, as well as any real-world implications of their argument, that they can do the job well and bring the desired result. Choose the best practitioner – one that believes in your case. On a practical level, appoint one person as the main contact with the lawyer, so that all evidence and communication can be channeled through them. Also, be responsive – lawyers can only act on a mandate, so with helpful feedback and cooperation, your lawyer can work wonders.
The number of domain name disputes is only increasing. What are the biggest mistakes that brand owners tend to make in the digital space and how can they better protect their rights from online infringement?
Brand owners are becoming more aware, vigilant and reactive as cases of cybersquatting are on the rise. Online monitoring is essential, as well as having solid technical and procedural IT security measures in place. Act immediately before the infringer abuses your rights in a manner that may compromise your brand investment, image and efforts. The UDRP system and WIPO offer an easy, fast and low-cost procedure to combat cybersquatting. With impeccable organisation and processes, coherent case precedents and effective outcomes, the domain name alternative dispute resolution mechanism is a valuable tool for brand owners looking to safeguard their rights.
Finally, how do you envisage recent global events affecting law firm trademark practices in future?
There has been an undoubtable shift online. From teleconferencing with clients, colleagues and counterparties to online trials, trademark office actions and even global or regional conferences, it is clear that we have entered a new online era, where work, communication, education and even justice can be achieved through our computer screen with the press of a button. I gave my first lockdown webinar and expect this to continue in the coming months, along with the substitution of live meetings with virtual ones, education sessions and dispute resolution, be it mediation or litigation.
Marina Perraki is a partner at Tsibanoulis & Partners Law Firm with a PhD in trademark law from Queen Mary University of London. In 2018 she was selected to help draft the new bill implementing the EU Trademark Directive in Greece. Dr Perraki is a seasoned litigator with an impressive winning track record. She has practised trademark law for more than 19 years and works mainly with international clients.
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