"I do not think that litigators or judges will be replaced by AI during our lifetime"
How did you come to choose a career in intellectual property and what has been the key to your success?
I have always been interested in business law in general and the fact that I have a scientific background (BSc) made me think about patents and other IP rights. I had the privilege of being retained by leading lawyers in the IP field and therefore quickly learned how to deal with IP disputes. There is no specific secret to becoming successful, but my deep interest in IP law has made it easy to work dedicatedly in the field. It has also helped to have great respect for such a complex area of law.
What does leadership in the field of IP law look like to you?
Leadership relates not only to doing good work as a lawyer, but also to being engaged in other activities within IP law. I have been an active lecturer at the Swedish Patent and Registration Office and a number of universities and IP associations. I have also been appointed as an expert in various legislative projects at the Ministry of Justice and the Swedish Bar Association.
Your practice encompasses disputes concerning trademarks, patents, copyright and registered designs, commercial IP agreements and marketing law. What tips can you share on how to remain at the forefront of industry developments and continue to offer high-level services to a roster of clients?
You need to be curious and never stop educating yourself in the field. It is important to learn about new leading cases from various courts. It also helps to deal with assets which are often the client’s most valuable. In addition, you must understand that sometimes you need to build a team with different skills to be successful.
Drawing on your experience in various forums, what are the key skills that a trademark litigator should possess, and how can these be honed?
Knowledge of the legal issues and facts will always be the basis for success, but on top of that you need to have interdisciplinary skills, as well as courtroom experience. You need to:
- understand consumer behaviour and how the market works;
- be able to co-design and interpret a market survey;
- identify the prosecution behind the registration; and
- be able to compile evidence, including witnesses and experts.
You also need to have skills in other areas of the law (eg, procedural and marketing law, and in some cases regulatory rules). The most important aspect is to understand what the client needs and the objects behind litigation; you need to recognise the commercial aspects behind the dispute. Litigation is not always the best route. A settlement, a co-existence agreement or another more commercial solution may be better in a specific case. This is learned only through experience.
Finally, how different do you think trademark practice will be in five years, and how should practitioners prepare for the future now?
I think that there will be a greater need for interdisciplinary skills. Collaboration with prosecution teams will increase, as well as collaboration with other legal fields, in order to better serve clients with valuable trademarks. There is also a trend for many disputes to end up in arbitration, which requires more arbitration experts. Transactions driven by intellectual property will continue to increase. The work, together with our commercial agreement group, has developed. The expectation for the future may be that the ‘full-service’ concept becomes even more attractive to clients. I also think that our investigations – both legal and factual – will become more efficient, perhaps with help from AI technology. However, I do not think that litigators or judges will be replaced by AI during our lifetime.
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Håkan Borgenhäll is a partner and head of the IP department at Vinge. His areas of expertise include IP litigation and offering strategic advice on IP protection. He has also been appointed as an IP expert by the Ministry of Justice in relation to various legislative projects. Mr Borgenhäll frequently represents the Swedish Bar Association as its expert in IP law, and is top ranked in various IP directories.