What are some of the biggest challenges that HGF has faced over the past 12 months, and how has the firm stepped up to meet them?
HGF has helped clients to deal with post-Brexit realities, such as business regrowth and picking up IP issues surrounding that. Postponed and purposely delayed matters needed to be picked up and planned. Internally, HGF has adopted new working routines following Brexit, such as flexible working times, home working and smarter travelling. Further, HGF is continuing its expansion across Europe and has dealt with increased cross-border team cooperation.
What could the industry be doing to improve opportunities, hiring processes and diversity?
It is crucial to recognise that the industry has a problem; it is male dominated and lacks ethnic diversity. While this is not by design, it tends to be the default setting for many firms operating in the IP legal sector for various cultural and economic reasons. How you speak, your race, sex or social background should not be a barrier for progression. Diversity should be seen as a strength. If firms reflect the wider population – and, in particular, their clients – then firms promoting diversity should prosper. Diversity allows for different approaches, instead of defaulting to the same one. Blind application processes should be encouraged; firms should anonymise applications, broaden the number of people involved in the application process and recruit from different universities. Success in business is not just down to academic success or attending the right school, but talent and dedication. Finally, firms should put proper processes in place with regard to maternity leave, which inherently places hurdles in front of women (eg, managing clients and workload) in terms of career progression.
The EU Digital Services Act seeks to address platform liability for illegal content, but when it comes to preventing infringing and counterfeit goods online, many believe that it is up to the courts and the industry itself to take action. What are the strengths and weaknesses of such a non-legislative approach?
Non-legislative approaches are often overlooked by IP legal professionals. The two most obvious ways to combat infringing and counterfeit goods are: educating the public about the issues of purchasing such goods and pricing by brand owners. While the EU Digital Services Act does place more responsibility on online platforms, the question is whether that will actually reduce the number of illicit activities. We are already noticing that several platforms have increased efforts to include their own checks and screenings. The same platforms are also providing us with better notice and take-down possibilities, which enables the industry and advisors to be much more effective when taking action. We therefore expect that fewer issues will need to be brought before the courts. However, it will still be a game of whack-a-mole to reveal and stop the sale of counterfeit products. Educational efforts and basic economics should contribute more to reduce the incentives for counterfeiters, reducing demand and profit margins.
What opportunities does HGF offer internally to retain and educate talent?
In many ways, the pandemic enabled more flexibility in work processes for HGF, which seems to prove attractive to employees. We have moved to hybrid working practices, but are relaxed; if an employee wishes to be in the office for five days a week, they can. If they want to work from home for five days a week, then they can. Flexibility and adaptability are key and not all employees are the same. Hybrid working has cut down on commute times and costs, which is attractive. However, a firm’s culture should not be sacrificed as a result of hybrid working. We have implemented leadership training and expanded our learning and development functions. We have an annual conference for the whole firm to come together and learn. Clearer progression paths are also vital; employees want to know that they can progress and how.
What are your top recommendations for keeping litigation costs down in the current economic climate, especially as more people are taking cases to court?
Going to court over IP issues involves uncertainty, delay and, above all, expense. Essentially, the top recommendation for keeping litigation costs down is to avoid them altogether. That is not to say you should not initiate or defend IP-related actions, but rather that you should take advantage of every opportunity to settle disputes out of court. If taking action is necessary, then start with an informal approach. Setting out concerns and demands clearly and openly will enable dialogue that leads to an agreed settlement. For those on the receiving end, a similar approach is recommended. If, despite that, an action is initiated, then be aware that various systems are in place to encourage parties to seek a settlement. For example, if someone opposes your trademark application, both parties will be afforded an extendable cooling-off period for negotiation before the formal action proceeds. Take advantage of that. Similarly, in actions before the courts, mediation is encouraged so take advantage of that. In summary, take every opportunity to negotiate, negotiate, negotiate. You may get a fair outcome and you will definitely save on costs.
There has been a renewed focus on GIs since the 2021 EU agreement and there is now a growing focus on these in China. Do you think that a more internationally harmonised approach towards these rights is on the cards?
If we look at the decades it has taken to reach where we are now with the protection of GIs in Europe, it is likely that it will take a lot of time for the rest of the world to catch up. However, we certainly hope that harmonisation is a priority because we feel that it is necessary.
There is a general trend for IP counsel to get more heavily involved with data issues. What advice do you have for anyone trying to incorporate this new work stream into their practices?
Partner with the right colleagues, advise on high-level opportunities in customs measures in Europe and run successful anti-counterfeiting programmes for multiple clients. As a firm that works for many brands across different industries, we are able to leverage good practices and routines across industries.
HGF is renowned for its expertise in protecting a wide range of rights. What are some top tips for rights holders looking to use the interplay between different rights (eg, trademarks and design rights) to protect their brands?
It is necessary to discuss with clients not just what they think is important, but how the market or public will look at a product. Only then is it possible to reveal all means available to protect a product via different IP rights – traditional and non-traditional (eg, position marks). Our attorneys have mastered this ‘3D’ IP review of products and services.
What are three pieces of advice for non-profits attempting to build and protect their IP portfolio?
IP rights are complex, with many pitfalls and expense traps for the unwary. That does not mean that non-profit organisations should minimise involvement, but it is crucial to be smart, concentrate on the key issues and keep things simple. That way, it is possible to maximise the benefits without excessive costs. So, let us look at three key areas. First, you should zealously protect your confidential data and understand that your donor and fundraising source lists are valuable resources. Ensure that your key staff know this too; have them sign NDAs so that this information stays within the organisation. Second, identify critical aspects of your promotional activities that are key to your brand identity and seek trademark registrations to protect them. Ideally, you want these registrations to cover your core fundraising activities and any fundraising product lines that you sell. Third, seek to avoid disputes with other rights owners. If you are developing your brand or logo and extending your range of promotional products, consider undertaking searches against existing trademark rights. The last thing you need is the expense of defending an action for infringement of third-party rights.
What challenges do you expect clients will face in the coming years, and how are you preparing to help them mitigate these?
Inflationary pressures are affecting clients and the budgets that they can devote to IP protection and enforcement. While such pressures should start to abate toward the end of 2023, value for money in IP budgets will always be important. IP attorneys and lawyers cannot live in legal iron towers. Ultimately, they are there to achieve a client’s business goals at a reasonable cost.
The increasing pace of technological advancements is also having a huge impact on clients. Markets are shifting and some are disappearing entirely. Such advancements are also spawning new IP infringement activity. Although the impact of NFTs and the metaverse may be overblown, they are here to stay. The rise of AI applications is a game-changer for the economy and society, and thus the IP industry. Further, clients are increasingly expecting technological solutions, so how we manage workloads and process management will be key. New types of IP law providers are constantly entering the market, so we have to adapt.
Partner and Chartered Trademark Attorney
Partner and Chartered European Trademark
Partner and Chartered European Trademark
Pieter de Ruijter
Partner and Chartered European Trademark
Consultant and Chartered Trademark Attorney