24 Sep
2021

IPSIDE

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

A: The main highlight has been preparing for the acquisition of IP law firms Santarelli and Brevalex. This has involved several due diligence tasks and numerous meetings.

One of the key focuses has been identifying the synergies between the three entities, in order to reduce weak spots and make the expertise of each of the three firms available to all of our clients. Our types of client (in terms of size and technical field), main areas of expertise and services offered, as well as the location of our branch offices in France, will all be extremely beneficial to the new group.

Once finalised, the merger will result in the largest IP firm in France, with subsidiaries in the United States and China, 70 patent attorneys, 30 trademark attorneys and five attorneys at law.

Q. With operations around the world, how do you ensure that your experts in different jurisdictions and offices keep abreast of the latest trademark developments and provide a consistent level of service to clients?

A: All the members of our network around the world must meet our standards of quality – if those of our foreign colleagues are not in line with ours, our clients will be the first to blame us.

We constantly scrutinise work fulfilled on our behalf by colleagues around the world – this is not an easy task because we cannot be aware of every local development. If something is unclear, we ask for more information. We must be able to explain any situation in the same way as if we were the foreign attorney.

Sometimes we have to change foreign colleagues, which is why we work with at least two firms in each territory.

We have an internal professional team in China, which shares information with IPSIDE FRANCE so that we can keep abreast of trends in the Chinese trademark landscape, as well as valuable cases or official decisions, adjudications and judgments. This allows us to provide an even better service to our clients.

Q. In 2018 the firm obtained an ISO 9001:2015 Quality Management System. Can you tell us a little more about why this was an important development and what it means for clients?

A: ISO 9001:2015 is designed to enable a continuing process of improvement with regard to operations. We explain this philosophy to all of our engineers, trademark attorneys and support personnel so that they can implement it in their daily practice.

When an issue arises, it is important to document it and then modify the relevant procedure. Once implemented, their correct application is checked.

For our clients, this means that any problem (eg, abnormal delays, relationship questions or lack of information) will be reviewed and treated. So far, feedback from our clients (as well as from our employees) has been very positive in that the improvement is continuous and no issue remains unanswered.

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

A: The crucial factor is the ability to combine two requirements that are somewhat contradictory – competence of the team and competitiveness (costs) of the service rendered.

With regard to competence, every staff member – from those at the switchboard to attorneys – must be professional in their field. They must not only know their job, but also must treat clients as if they are the practice’s main concern.

With regard to competitiveness, while being utterly attentive to clients’ needs and expectations, each member of the team – especially attorneys – must be aware of the time spent with each client in order to be able to charge reasonable fees. Clients can always be lured away by competitors offering cheaper rates.

Q. If you could make two changes to the European trademarks filing landscape, what would they be?

A: Although we agree that specifications should fit in the harmonised database, it is unfortunate that almost every time we file an EU trademark application with a complex list of goods and service there are issues with proceeding. Once the first is solved, another one crops up. It would be more convenient if we could know from the start where the issues lie.

In addition, we have become aware that some European lawyers and trademark attorneys have begun to rent their professional accounts out to foreign agents who then prepare the filing, in order to keep costs down. This is dangerous for applicants, as foreign agents do not know French and European laws and jurisprudence and this practice disturbs the market order in our sector. We wish that the EUIPO would issue rules to prohibit this kind of action.