Barker Brettell LLP

Barker Brettell LLP Team

Q: What have been the highlights for the firm over the past year?

A (Catherine Wiseman): We have had an exceptionally successful year – my first as head of Barker Brettell’s trademark team – from both a business and a professional perspective. Our combined UK and Swedish offering has resulted in statistics showing that as a European team, our Swedish office has been ranked the top Swedish EU trademark filer of 2019 barely one year after opening. In addition, according to UK statistics, we currently rank in the top three UK filers of EU trademarks and the team has seen a record 19% year-on-year rise in trademark applications. It is also an honour to be recognised by fellow professionals, so maintaining our WTR gold ranking, being nominated for Managing IP’s Trademark Prosecution Team of the Year global award and personally being named among the Top 250 Women in IP 2020 by Managing IP for the third year running has made this year very special.

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

A (Catherine Wiseman): Team work is at the heart of our success. But I am not just talking about the Barker Brettell team here – we consider ourselves part of our clients’ teams. This is not just marketing speak; by embedding ourselves like this we can anticipate what might be coming around the corner – increasing effectiveness, efficiency and positive outcomes.

A (Tracy Arch): Both the attorneys and the support staff in the trademark team are engaged and dedicated. We enjoy a very low level of staff turnover, so many of us have more than 20 years’ experience in the profession – whether as attorneys or support. Being a collegiate team, everyone has a job to do and knows how to do it. This level of knowledge and best practice enables us to offer the highest standard of service and advice.

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

A (Catherine Wiseman): Be available and be responsive – your key performance indicator should be to file on the same day of instruction and to always acknowledge new instructions immediately. If you are accurate and timely in your response, it will make your clients’ lives easier. You will be surprised how many times clients notice that you are going the extra mile.

A (Tracy Arch): Listen to the experience of others and think about the bigger picture. This goes back to our last point: team work. Really knowing what your client needs, rather than what they may think they want, will help you to offer pragmatic advice. In this profession, one size does not fit all; it is not a box-ticking exercise, so being able to offer bespoke advice and solutions is essential.

Q: How effective do you think measures implemented by the EUIPO to minimise the impact of covid-19 have been, and do you expect new practices or ways of working to be retained?

A (Catherine Wiseman): We appreciate that at the beginning of lockdown it was a challenging environment for everyone. However, communication surrounding the impact on consequential dates on oppositions was unclear – different attorneys in our team were given conflicting answers, which were very unhelpful. The deferment of deadlines and the granting of extensions were useful, but each time they were announced at short notice.

A (Tracy Arch): We welcome the decision to introduce a fast-track pro bono scheme to support SMEs and feel that these types of projects will become more commonplace. This sector is the backbone of most economies, so naturally Barker Brettell will be supporting this positive move.

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

A (Catherine Wiseman): Aside from the frustrations of Brexit or wishing that we could forge some sort of reciprocal IP agreement between the United Kingdom and the European Union, we would like to see much more consistency in the approach to the registrability of English language marks before the EUIPO. We find that, frequently, the subtleties or nuances of English language marks are not appreciated by the EUIPO and therefore marks are often accepted before the UK and Irish offices but refused before the EUIPO. This inconsistency is difficult to explain to clients. A constructive approach offered by the UK Intellectual Property Office is to have objections reviewed by a more experienced or more senior examiner before final refusal is issued.

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