You have represented clients in a range of industries. How do you stay up to date on market developments to ensure high-quality services across an array of sectors?
The first thing to do is to keep up to date with changes in trademark law and practice. One of the joys of trademark work is that it is an ever-changing feast and the law never stays still. The problem here is an overabundance, rather than a lack, of information. One of the best ways to overcome this is to engage with professional bodies that keep you abreast of local and international developments. I am also an editor of the United Kingdom Trade Mark Handbook and the European Union Trade Mark Handbook, which forces me to keep up to date with case law, among other things. In terms of market developments, one of the best methods is to keep in touch with and talk to your clients. In our field, it is vital to really know the businesses of your clients and the commercial challenges that they are facing. I try to meet and speak with my clients regularly so I know what changes are occurring in their field.
What characteristics should brand owners look for in an elite-level trademark attorney?
For me, the key requirements are:
- a good detailed knowledge of trademark law and practice;
- sound commercial common sense so that the attorney can give their client the best commercial recommendations to achieve its aims;
- responsiveness – in the modern world it is vital to get back to clients quickly; and
- commitment – I believe that a professional should put the interests of their client first and this means fighting the client’s corner as much as possible.
You have an expanding practice relating to domain name disputes. What are some of the biggest challenges that your clients face in the digital space and how can brand owners better protect their rights online?
Every client will be different and the priorities and amount that a client can spend on policing its trademarks will vary considerably from client to client.
Nevertheless, the key steps are to:
- work out a strategy with the client based on what it wants to achieve and at what cost;
- register those domain names of key interests, while keeping an eye on expense;
- register brands with appropriate providers such as Amazon or eBay; and
- consider commercial watch services that can monitor the brands of interest online, although this is pricey and will depend on what the client can afford.
Now that the United Kingdom has officially left the European Union, what changes do you expect to see in your daily role?
The short answer for us is probably “not a lot”. We have set up a new office in Portugal and will be continuing to practise before the EUIPO and to handle EU trademark applications and oppositions. However, for the profession generally, there will be an increased emphasis on UK trademark prosecution and opposition work. With the creation of a new UK right at the end of the transition period, there is likely to be an increase in dispute work. I would expect the UK profession over time to further increase its emphasis on handling oppositions and cancellations, as well as dispute work. There will also be additional work in handling revocation actions both before the UK Intellectual Property Office in relation to new UK rights where it is questionable as to whether the owner has sufficient use to preserve the registration elsewhere in the European Union and before the EUIPO where the owner has used the mark in the United Kingdom only.
Finally, what advice would you give to a younger practitioner considering a career in trademarks?
First, enjoy! Being a member of the trademark profession is a great privilege. It is one of the most exciting and interesting professions. Be prepared never to know what will land on your desk when you come into the office each morning.
Other than that, keep up to date with your knowledge of law and practice, be committed to the interests of your clients and work hard!
Mark Hiddleston is director and founder of Hiddleston Trade Marks, a UK firm established in 2015, with over 25 years’ trademark experience. He has substantial experience in the clearance and prosecution of UK and EU trademark applications and the handling of oppositions and cancellation actions before the UK and EU IP offices and worldwide. Mr Hiddleston is a senior editor and contributor to the United Kingdom Trade Mark Handbook, one of the leading authorities on UK trademark practice, and the European Union Trade Mark Handbook.
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