Practitioners must understand and support the business

  • Practitioners must look beyond the legal department to solve problems
  • Trademark counsel will need to utilise their diverse backgrounds and skills to facilitate collaboration
  • As a result of globalisation and modern communications, businesses are rapidly changing

Increasingly, trademark practitioners must look beyond the IP or legal department to solve the problems they face. This will come more quickly where departments are being reduced or merged. Some opportunities are obvious; many trademark practitioners already work closely with marketing, advertising or security departments, and will be happy to build on this. One of the great assets of trademark practitioners is that they have diverse backgrounds (eg, compared to patent attorneys); many have law degrees, but others have marketing or linguistic backgrounds or technical or artistic qualifications. This makes them better able to understand and communicate with specialists with other skills.

These skills will become more important thanks to globalisation and modern communications. Products will be launched more quickly; social media campaigns will pop up, perhaps in response to a topical event or a new leadership direction; and new business leaders will expect companies to change direction overnight if the business priorities are reviewed. “Big change can happen in half a year or even in a quarter now,” posits one in-house counsel.

In this context, trademark counsel will need to better understand what drives the business and where the risks are and then give appropriate advice. They will need to go from being essentially an administrative function – acting defensively, keeping records up to date and dealing with problems as they arise – to one that is truly adding value to the business, always bearing in mind, as one in-house counsel says: “We should not forget we are still part of service organisations within companies. We are serving not driving the business. A company run by lawyers would be a mistake! The company should be run by developers and cool designers – that’s how the company makes money and how you build a brand.”

There will also be a greater need for IP counsel to communicate across the company, visiting different offices and providing training and best practice guidance to all employees on topics, such as recognising counterfeits, brand consistency, data protection and (where there is R&D) protecting innovation and trade secrets. One in-house counsel predicts that internal communication will become as important or more important than external communication with law firms and service providers – as employees around the world will be the eyes and ears to identify and confront problems that arise.

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