Lenz & Staehelin
"Lawyers should behave like a dry sponge"
Can you tell us a little about your career to date?
After qualifying as an attorney at law – which also enabled me to see the inner mechanics of the judiciary from a law clerk’s perspective – I did a doctorate in privacy and data protection law. At the same time, I worked for the Swiss minister of justice on legislative IP projects such as the new Trademark and Copyright Act. I then worked for the Swiss Federal Institute of Intellectual Property, which is the government IP authority in Switzerland. As a member of the board of directors at the IP office, I was involved in the country’s delegation at WIPO and the World Trade Organisation and was responsible for the department dealing with trademarks and geographical indications (GIs), including all legislative and operational work. I then obtained a post-graduate degree in European and international business law, acquired international experience and went on to private practice – first as a partner at a boutique IP firm and then, 15 years ago, as a partner at Lenz & Staehelin. Besides my full-time work at Lenz & Staehelin, I teach IP law as an adjunct professor.
How has working in boutique, full-service firms and IP office environments sharpened your IP skill set?
Working at these different places has certainly sharpened not only my analytical and legal skills, but also my understanding of the function of the law in the business world and society. Moreover, even now, I still find it useful in my day-to-day work to have had this deep insight into the functioning of the judiciary and the legislative and IP office environment. Valuable insights into the IP office environment can be leveraged for strategic decisions on legal issues. Working in a boutique meant that I had the advantage of starting my private practitioner’s career building the necessary practical expertise from scratch, while benefiting from the life-long experience of mentors at the time. Switching to a full-service firm then completed the pictured of IP law as a key pillar of modern business law.
What are the key differences in regard to the management of trademark practices in boutiques and larger firms, and what can each learn from the other?
There is almost no difference with regard to the management of the practice. The difference is that the IP function in a larger firm is not only a stand-alone centre, but also involved in the firm’s transactional work. Decades ago, lawyers had to fight for the acceptance of signs as trademarks, as is still the case for non-traditional marks. Now, trademarks and other IP rights have become an important topic in transactions and today, when you look at discussions about valuation and evaluation, these rights can be a hot topic in finance. While boutiques mostly deal with traditional work, the IP function at a larger firm is also involved in these transactional and financial developments.
What are your top tips for ensuring that the services of your trademark team remain relevant in an ever-changing commercial environment?
Intellectual property remains relevant by itself and is becoming increasingly relevant in the digital economy. Staying at the forefront of legal and technological developments is key. In addition – even if this might sound old fashioned – work hard and have fun doing it.
What qualities make for an elite IP lawyer and how can they be better developed?
First, a top-notch academic education is crucial. Second, lawyers should behave like a dry sponge and learn from the experiences of colleagues and mentors. Always keep your mind open, be sharp and take an interest in the real world. Being sincerely interested in interdisciplinary matters, especially economics, is important. Being creative, rather than defensive, is also important when dealing with complex situations. That way, you can offer a solution. In addition, an excellent IP lawyer should be able to deal with not only trademarks, but also other fields of intellectual property, or at least have a deep understanding of the broader picture of IP and competition law.
How are client demands changing and what impact has this had on your practice?
I do not see IP or trademark-specific changes in client demands. The changes are the same as in other fields of the legal profession – more technology is involved and therefore more speed.
You were previously director of the Swiss Intellectual Property Institute. Based on that experience, how do you feel the role of the IP office is evolving and what might intellectual property look like a decade from now?
The core mandate of the Swiss Intellectual Property Institute will stay the same; it is responsible for legislative work in IP matters and operational work in the areas of trademarks, patents, designs, copyright and GIs. In addition, the institute – which is already doing a lot in this regard – will have an even more important role in educating the public and especially small and medium-sized companies in Switzerland on the significant role of intellectual property in the economy and society. I would like to see the Swiss Intellectual Property Institute become one of the top government IP bodies of the world, using the best technology available to serve users of the IP system in the best, quickest and most cost-efficient way possible.
GIs and appellations of origin are one focus area of your work. In recent years, they have become a hot political issue. In the commercial arena, how do you see their use evolving in the coming years?
GIs and appellations of origin will become even more important and therefore even more disputed. The reason is simple; if set up and managed properly, a GI and – even more so – an appellation of origin functions like a selective distribution system. While the geographical name defines who constitutes a potential user of that name, the manager of the system (normally a consortium) defines the qualitative requirements for use of that name (eg, specific traditional standards). Combine this with the perfectly legal (at least in some legislation) possibility of managing production volumes, and rights holders can build a strong production and distribution chain, which can create real value for members and survive world-wide competition.
Switzerland has been a leader in terms of developing its country brand, with ‘Swissness’ a powerful asset for those able to utilise it. What can other countries learn from this example?
The success of the Swiss country brand is a result of many factors, ranging from high-quality products and services, a good education system, political stability, predictability, a wonderful landscape and historical circumstances that were not unfavourable to Switzerland. The political pressure for the ‘Swissness’ legislation came from the fact that there were too many abuses of the Swiss Cross and the country name at the end of the last century. In order to identify and avoid misleading use, Swiss legislation has defined specific criteria that must be respected when using geographical names. Some of these criteria – and this is the novelty – are measurable (eg, a certain percentage of the weight of a product or a certain percentage of the productions costs that must occur at the place to which the geographical name refers). If other countries want to clarify their legislation and avoid fully delegating the question of whether certain use of their geographical names is misleading to the courts on a case-by-case basis, the Swiss legislation provides a good role model. On the other hand, they should be very careful when defining these criteria. Lobby groups could be tempted to use them to create new barriers to trade.
Looking ahead, what do you see as the major upcoming challenges for trademark owners – and, by extension, their expert advisers – in Europe over the coming years?
The first challenge is to create a trademark that you can use in many if not all jurisdictions. There is a natural tension between the need for a trademark that you can use identically in multiple markets and the territorial boundaries of trademark law. Therefore, trademark creation has become increasingly difficult and sometimes even painful.
The second challenge is the enforcement of non-traditional trademarks. In this regard, we are only at the beginning of new challenges. Registering such marks in one thing; enforcing them is another, much more complex matter.
Third, the relationship between the trademark as a property right and use restrictions (eg, advertising regulation and free speech considerations) has become more complex.
However, the most important challenge for trademark owners may not be a legal one. It is the task of creating the brand reputation that the owner desires and positioning the trademark in the marketplace in a way that it can continue to fulfil its function of information and distinction in an extremely competitive environment. The law can help to achieve this – but cannot achieve it by itself.
You teach IP law at various institutes, including the University of St Gallen. How important are these activities in terms of your own professional development?
Important. Teaching means giving and sharing. It involves going beyond the textbooks. Students can read textbooks themselves; they do not need you for this. Instead, they need you to contextualise things. They need you to explore the values, intent and choices of the legislator behind the rules, explain and discuss the evolution of jurisprudence and – most importantly for IP lawyers in a small country such as Switzerland – compare this with the sometimes richer jurisprudence of other important, neighbouring jurisdictions. Teaching also means permanently working on your own capacity to address complex issues in simple terms, without hiding behind expert language. This is something that practitioners can use every day. I am a strong believer in the conviction that you have only understood things when you can explain them in an easy to understand way. Last but not least, it is fun to help educate the next generation of IP lawyers.
Finally, if you were to give one piece of advice to practitioners starting their career in intellectual property, what would it be?
They should recognise and enjoy the fact that it is a privilege to work in a field of law that combines intellectually complex concepts with real-life products and services, and which – by its nature – is very interdisciplinary and at the heart of every business. And as I have already said, work hard and have fun.
Jürg Simon is a leading expert in IP and competition law, including IP-related arbitration, focusing on trademarks, design, licensing, selective distribution systems, information technology, media and appellations of origin. He is also involved in patent litigation in the food industry. Dr Simon was a director at the Swiss Federal Institute of Intellectual Property and is a professor of intellectual property at the University of St Gallen. He regularly authors publications on intellectual property and competition.