Frank Schöne-de la Nuez

What led you to a career in trademarks and what advice would you offer anyone considering a similar path?

I began to specialise when I went to New Zealand to earn my master’s degree. As a part-time student, I worked for an IP firm that eventually employed me full-time after I graduated. I did a lot of clerical work first, but that exposed me to many case constellations, industries and all types of clients. It was tedious at times, but after the experience, I knew the trademark field inside and out. From there I went to work for a multinational pharmaceutical company. This gave me full exposure to a heavily regulated and international field. My main advice to those considering a career in trademarks is, first, adopt a business perspective. What organisations really need are lawyers who also understand the business strategy aspect of what are, on the surface, legal problems. Second, adopt an international perspective. The phrase that everything is connected has never been truer than in the trademark field, in the Internet Age. Third, develop good communication skills, the most important of which is to learn to ask questions, and learn to listen. To me, this is the most underrated skill of all.

How is diversity and inclusion promoted at CSL Behring and why is it so important?

As a global organisation with employees in more than 35 countries, diversity and inclusion is a foundation of our brand. At CSL Behring, we believe that honouring and harnessing all our colleagues’ diverse perspectives, ideas, capabilities and experiences allows us to effectively deliver on our promise to serving patients, which is our ultimate purpose. When partnering with external trademark firms we assess them from many perspectives, one of which is diversity and inclusion.

How do you envisage brand portfolio management practices changing in the next five years, especially in the biotech space?

Technology will play an ever-increasing role in brand portfolio management. The availability of data management systems, and their versatility and reliability, is steadily evolving. Take the simple task of data entry on your own portfolio management system: I suspect that it is only a matter of time until automated data importation plug-ins will be standard. As for the biotech space, we are observing how organisations are extending their branding efforts to encompass patient support programmes, clinical trial naming and, most importantly, the protection of digital assets in general. In the Internet Age, all companies are heading towards formal protection of previously unprotected assets. In order to keep track of what is going on in the marketplace, we are now working with brand protection software that enables us to understand the bigger picture.

What are some of the biggest enforcement challenges that CSL Behring faces around the world and how do you overcome these?

We face the same issues as all pharmaceutical companies: Class 5 is cluttered with unused trademarks. Given that we also require regulatory approval for our medicinal products by agencies such as the US Food and Drug Administration and European Medicines Agency, we go through two parallel, independent proceedings, facing two options that could fail. Accordingly, when filing name candidates, we tend to file an additional two or three trademarks, just in case our initial choices are not approved. With many trademarks in Class 5, combined with the need to achieve global coverage, we try to adapt our filing strategies, and place a lot of emphasis on clearance searching. With the help of technology and a lot of training, we can act as an in-house task force that identifies risks at early stages.

As we finally begin to emerge from the pandemic, what covid-prompted changes and restrictions are you looking forward to seeing an end to – and which business changes of the last two years are here to stay?

I will never forget how we moved to Microsoft Teams in March 2020. The go-live happened on a Sunday night. The following Friday, due to lockdown, we were sent to work from home. While I was sceptical at first about how we would deal with the lockdown situation, technology has not only helped us to cope, but I would argue that it has taken us to the next level. For example, the use of Zoom or Teams allows us to communicate more efficiently and build a closer relationship with many of the law firms we work with. It has been essential to fostering collaboration when working across geographies, or when it is not feasible to meet in person.

Frank Schöne-de la Nuez

Head of Corporate Trademark Department
[email protected]

Frank Schöne-de la Nuez is the head of corporate trademarks at the CSL Behring Group. He graduated from Konstanz University, Germany, holds a LLM degree from the University of Auckland and passed the examination for EU Attorneys in Spain. Mr Schöne-la Nuez has worked both in private practice and multinational corporations. He deals with all names-related activities at CSL Behring, including pipeline product naming, oppositions, company name matters, domain name conflicts and parallel imports.

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