Elkington and Fife LLP
"Gone are the days when a mark could be only a word or a logo"
You have more than 30 years’ experience in the fields of trademarks, designs and copyright. How has the industry changed during your career, and how easy has it been to keep pace with an evolving environment?
When I started my career, we had computers – but only dial-up internet access and no Windows or mobile phones. It is now hard to imagine working life without laptops and smartphones. The sector has evolved relatively organically, meaning that it has been quite easy to keep pace.
Thinking back, we did not have the EUIPO – or the Office for Harmonisation in the Internal Market (OHIM) as it was – and the United Kingdom was not a signatory to the Madrid Protocol. Therefore, if clients wanted protection outside the United Kingdom, we used foreign associates. I remember that when the United Kingdom signed up to the Madrid Protocol there were predictions that this would be the end of the UK trademark profession, and there were similar noises when the OHIM came into being.
The UK profession has had to adapt, but it is still thriving and evolving. I have also maintained a strong network of foreign associates in the European Union and beyond, so the EUIPO and the Madrid Protocol have not had an adverse effect on this.
Perhaps the most fundamental change has been the need to keep abreast of the changes in law and practice, and the almost constant torrent of new case law. Gone are the days when a mark could be only a word or a logo – although plenty of traditional applications are still being filed.
How are client demands changing and what impact has that had on your practice?
This ties in to my answer to the first question. Clients rightly expect prompt service, and being “always on” facilitates this. I would say that it is easier to manage client demands now because it is no longer necessary to be at your desk in order to do so. In a counter-intuitive way, it makes being out of the office less stressful, because it is possible to manage workloads and therefore client expectations more efficiently.
You previously served as president of CITMA. How did that role enhance your professional development and benefit your day-to-day practice?
It was a whirlwind and the two years passed very quickly, but it was an absolute honour to meet representatives from trademark offices and practices across the world and to fly the flag for UK trademark attorneys and the UK trademark profession. It taught me a lot about diplomacy and public speaking, and raised both my professional profile and that of CITMA. It was also a great benefit to my practice because I was able to lobby for trademark owners and substantively influence the development of IP law and practice.
If you could make one change to the trademark world, what would it be and how would it benefit clients and their legal advisers?
I would make it easier to root out bad-faith trademark applications across the world by standardising the practice of trademark offices. In my view, it should be far simpler to establish that there is bad faith on a prima facie basis, at which point the onus should be firmly on the applicant. This would save a lot of money and reduce the number of obvious bad-faith trademark applications, because applicants would realise that their applications would fail.
Finally, how do you expect the industry to change over the next decade and how should attorneys prepare for the future?
The future of the industry is likely to focus on AI. There is clearly much in our sector with which AI can assist, from the obvious aspects of form filling to preparing at least a first draft of an agreement. However, I believe that AI can be a positive development, and that it will assist us in our work. I would suggest that attorneys embrace it on this basis. I do not think that we will have much choice but to do so.
Assuming that it happens, Brexit is also likely to have a fundamental effect on the industry, both in the United Kingdom and internationally. It will make it more expensive for brand owners to clear, protect and maintain their trademarks, so budgets will be squeezed even further.
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Chris McLeod is a partner at Elkington and Fife’s London office. He joined the firm in 2015 and leads its trademark practice, encompassing the full range of clearance, prosecution, transactional and contentious trademark work, as well as covering advice and services in relation to designs and copyright. Mr McLeod has been an active member of the Chartered Institute of Trademark Attorneys (CITMA) for many years, serving as its president from 2014 to 2016.
Click here to see his WTR 1000 2019 profile.