What led you to a career in intellectual property and what advice would you offer anyone considering a similar route?
Having finished my master’s at the University of Copenhagen, I went on to study at the Julius Maximilians University of Würzburg, obtaining an LLM in 1996. As part of this, I wrote a larger paper on the Community trademark and the Agreement on Trade-Related Aspects of Intellectual Property, sparking my interest in trademarks, unfair competition and marketing practices. This was back in 1994 when the first EU Trademark Regulation had just been adopted. While Community trademarks would not come into effect until two years later, I found the concept of a uniform regulation throughout the European Union fascinating and I have been interested in trademarks ever since.
In 1998 I joined the Norwegian Industrial Property Office (NIPO) as an examiner working on trademark matters. I worked at the NIPO for just under a year before returning to Denmark, where I went into private practice working with trademarks, domains and unfair competition. Over the years, my practice has expanded, particularly in relation to advising on and enforcing related areas such as copyright, design rights and utility models. In 2010 I also became manager of the legal team at AWA Denmark.
From here, my practice has further evolved to reflect how increasingly complex IP work has become. In 2011 I founded AWA Law Advokater to accommodate our clients’ growing need for litigation services in Denmark. Today, I enjoy working with the entire spectrum of IP matters, from filing strategy and clearing to prosecution and litigation.
If you want to work in IP law, you need to stay curious about related legal areas, including media and marketing law, and have an international mindset. I found that starting my career at an IP office gave me a good basis for proceeding to private practice and covering more aspects of IP law. Working with intellectual property from different angles is something I would recommend trying. But always stay curious and take on challenges for yourself.
What has been your proudest achievement over the past year?
The legal team here at AWA Denmark received the Trademark Prosecution Team of the Year award in 2020 from World Trademark Review, an achievement that I am proud of. It means that clients have given us great reviews and we have been working hard to stay client focused and modern in our services. It was great receiving this acknowledgement for our efforts as a team. This year we received the Managing Intellectual Property Trademark Prosecution Firm of the Year award – confirming to me that we are moving in the right direction.
In addition, becoming president of the ECTA in June 2020 was a noteworthy achievement. Having been a member of ECTA since 2005 and part of its management since 2016, I have always enjoyed working in ECTA committees on matters of substance and taking part in official meetings with EUIPO, WIPO, the European Commission and other IP bodies. As a member of the management team, I have played a big part in introducing and setting the structure for the new IT system in relation to ECTA’s secretariat and the committee workflow. It has also been a pleasure forming parts of the association’s academic programme over the past few years.
Following the impact of the pandemic, we are currently testing a number of initiatives such as the ECTA Debate Club, which is due to be open to members in June 2021, with a hybrid conference to follow in Vienna in October 2021. Keeping ECTA active in influencing legislation by providing IP institutions with balanced legal input that is relevant to its members is an objective that I am committed to. ECTA has a special place in the European IP scene and I am proud to be a part of that.
What does effective leadership look like to you?
I have been a leader of the legal team at AWA Denmark for more than 10 years and it is a different experience compared to leading ECTA. But overall, I would say a key element in effective leadership is communication on all levels. You need to stay in touch with your team members and they need you to be visible. Only by staying in contact will you be able to nurture strengths and talents in the team. The visibility is, of course, in relation to goals, but also about being visible as a whole person.
What are the biggest enforcement challenges currently facing EU rights holders?
A lot has been done on enforcement when it comes to the legal framework. Of course, for some countries you can always wish for more. While Customs is working hard in many countries, the sheer number of counterfeit goods stays a top enforcement challenge. I think spreading more consumer information so as to diminish demand is a challenge and should be focused on even more.
Which upcoming European legislative developments should international rights holders be monitoring?
The ongoing design reform will be something for rights holders to monitor and it will be interesting to see the proposals for spare parts and 3D printing. The Digital Service Act is also being processed in the European Parliament. This will introduce a series of new harmonised EU obligations for digital services that connect consumers to goods, services and content, as well as new procedures for the faster removal of illegal content to protect users’ fundamental rights online.
What are your top three tips for building long-lasting client relationships?
I have been working with some of my clients for more than 20 years and long-lasting client relationships are something that I take great pride in and strive to achieve. Of course, it has to do with trust, but also focusing on your client’s interests. My tips are, first, take a real interest in your clients, their business, future plans and strategies, and then target your advice to that reality. Second, give long-term advice; you need to be able to explain a decision taken in relation to an IP matter 10 years ago. Finally, be humble; you are an adviser – nothing more, nothing less.
How have client demands changed over the years – and how are they likely to change again?
Clients are always cost-focused and it is important to understand this and to accommodate their needs by providing services that are on-point. They are also interested in digital tools to handle and provide an overview of costs, as well as cases. As partners we need to ensure that we can work with these tools and, above all, provide transparency at all times. This will only increase as a client demand in the future.
What have been the biggest challenges in your role as ECTA president, and how have you overcome these?
Covid-19 is affecting everyone and determining how to adapt to it is difficult. This is also true for ECTA. Keeping members interested and active at a time when they may be facing new issues within their companies is a real challenge.
We have used - and continue to use – this period to test a number of initiatives. Last year we moved all our committee meetings online. While we will still host most events online this year, we will try to run a hybrid conference in Vienna in October.
At the end of 2020, we also launched our first podcast. In the first episode, the Design Committee engages in a lively discussion on the Court of Justice for the European Union Cofemel decision and how the intricacies of the interaction between copyright and design law have been interpreted by national courts. This is something that we want to explore further, especially if ECTA members take to the format.
In June 2021 we will introduce the new-format ECTA Debate Club, which is aimed at members and will attempt to focus on specific topics in a smaller forum, which should allow for a more in-depth discussion. We are optimistic that this initiative can be expanded further.
By testing various initiatives, we hope to move ECTA forward and keep it relevant for members. You have to adapt and I am confident that by trying new initiatives we will find ways to keep the association active and relevant post-pandemic.
Which recent EU decisions do you expect to have the biggest long-term impact on your clients’ IP strategies?
We have seen a continued process of clarifying the scope of protection for trademarks consisting partly of a non-distinctive element. Clients often wish to file applications for such marks and the scope of protection is something that can be difficult to explain, given that this can still be assessed quite differently depending on the instance trying a case. In real life, decisions such as Cases T-503/19 – involving XoXo as a sign of love and affection for gifts – and T-251/17 and T-252/17 – involving Simply. Connected. – will be important pieces in this patchwork.
If you could make one change to global IP practice, what would it be and why?
I would like to see a more uniform approach to use requirements, re-filings and bad-faith applications. Clearing trademarks remains a difficult exercise. And in terms of strategy for both prosecution and enforcement, can you rely on a re-filed mark or has it been filed in bad faith? In fact, which of the two would be preferable? While we have a strong legal framework to build from, it would be good to see more uniformity in practice.
Anette Rasmussen’s experience encompasses all aspects of IP law, including copyright, utility model disputes and patents, with a focus on trademarks, domain names and marketing practices. She advises clients from a diverse range of industries, providing advice on worldwide strategy, prosecution and enforcement of IP rights, infringements, ownership and validity disputes. Ms Rasmussen works closely with two of the top 10 most valuable Danish brands (as ranked by Brand Finance) and has assisted with their expansion and establishment throughout the world with regard to trademark registration and enforcement.