Julia Talke

What prompted your transition from private practice to in-house?

Admittedly, I was not specifically looking to move in-house, but I am only admitted in New York. When I moved back to Europe, in-house was my best option – and it was the right move. While I loved my clients in private practice and enjoyed the diversity of industries and issues, I was always outside counsel – the person you mostly go to when you already have a problem. Now I am involved in projects from the outset, I help develop strategies, anticipate and avoid issues and work together with my business colleagues to shape the company’s path. I can directly see the results of my work.

As in-house counsel for a large international company, looking beyond one’s local jurisdiction is crucial. How do you adapt your strategy to take account of jurisdictional differences?

As an attorney born in Germany, raised in Spain, trained in the United Kingdom and qualified in the United States, ‘local’ is not part of my vocabulary. Even when looking at specific local requirements, I always keep an eye on global applications and implications. What may start as a local business initiative often expands to the regional or global level, so it is good to be prepared. Unfortunately, that often means adopting the most stringent local legal requirements for global application. For example, we aim to use global packaging, only changing languages depending on region. From the beginning, I must anticipate jurisdictional differences even though a product is initially only intended for, say, the Chinese market. In an international company, always anticipate that your local product will do well and end up being sold globally.

What impact are strong economic headwinds having on the decisions you are making as in-house counsel?

We all need to scrutinise where we spend money. For me, this definitely does not mean always choosing the most economic option – especially in portfolio management, spending more on the right outside counsel can save money down the line. Most of the impact is felt in enforcement. I cannot employ all the service providers I would like to help monitor and enforce our brands and some actions against third parties are not cost efficient. I am currently focusing on a strong online monitoring and take-down regiment and enforcement at customs.

You are celebrated for your wealth of experiencing in managing global trademark portfolios. What changes would you like to see to the landscape, and do you think they will happen?

I feel that, recently, there has been an increase in non-use cancellation actions in China, brought by applicants whose trademarks are blocked by existing registrations and who might feel that seeking cancellation is their only recourse. I believe this is partially caused by uncertainty about whether the CNIPA will accept a letter of consent or coexistence agreement. Its negative attitude towards both is costing rights holders significant time and money defending against avoidable actions. The CNIPA wishes to protect the public from confusing trademarks, and so do I. I most certainly do not want our customers to confuse someone else’s trademark with ours. However, rights holders have more information about how a trademark is or will be used that is unclear from the trademark record. If we believe that there will be no likelihood of confusion (ie, due to different audiences, sophistication of products, markets or purchasers), that should carry weight. No rights holder would issue a letter of consent to a third-party applicant if they believe it could harm their own mark and confuse consumers. I hope that the CNIPA revisits its reluctance towards letters of consent or coexistence agreements, as they are vital tools. Maybe it could consider publishing guidelines as to what it would consider to be acceptable.

What are the key characteristics you look for in outside counsel?

While I need to keep an eye on the global applications and implications, I need my outside counsel to be an expert in the relevant local jurisdiction. It is also key that my outside counsel is aware of the intricacies of our business. This helps tremendously in formulating new trademark applications, judging potential infringement and helping me strategise. It is also helpful to have a partner that is aware of what is happening with my portfolio on a global level. That is one of the main benefits of working with one law firm or one network globally (and makes invoice review so much easier!).

Julia Talke

Global Lead Counsel, Trademarks and Branding
[email protected]

Julia Talke is the global lead counsel for trademarks and branding at Lumileds, a global leader in the lighting industry. She manages the company’s trademark portfolio and advises on enforcement, branding and marketing activities. Previously, Ms Talke worked as IP counsel for Philips and as an IP associate at Baker & McKenzie in New York, where she advised clients in the entertainment and fashion industries on trademark management, brand protection and promotional matters.

Unlock unlimited access to all WTR content