E Blum & Co AG
What qualities make for an elite-level practitioner in the IP field, and how can these be honed?
Being educated by experienced and skilled practitioners is a must – but is not enough on its own. In order to meet client expectations, an elite-level practitioner must be able to see every case from both the client’s and the opponent’s perspective. A certain degree of empathy is indispensable and, even in extremely difficult cases, practitioners should maintain a cautiously optimistic tenor. Loyalty, responsiveness, reliability and truth are cornerstones for success. Love your job, remain eager for knowledge, refrain from being over-confident and challenge yourself, your company and your employees from time to time.
What challenges are being raised by clients most frequently at the moment, and how can these be tackled?
Besides professionalism, clients expect cost-efficiency from the outset. We also frequently experience tighter timeframes. Clients often want maximum security on new projects and it can be a challenge to explain that there is rarely absolute security for fresh trademark application projects. In the past, the trademark registers were less crowded; thus, it was easier to register new marks. On the other hand, there are numerous marks that are now vulnerable to cancellation due to non-use; therefore, it may still be possible to register a new mark even where there is the potential for infringement on a prior registration. In these cases, it must be made clear to the client at an early stage that the respective searches and cancellation procedures will involve additional costs.
What are the top qualities that clients should look for when seeking world-class trademark advisers?
Clients should look for real added value, for outside counsel who they can trust and for ingenuity, impartiality and empirical realism. Besides a comprehensive know-how on all aspects of trademark-related legal issues, trademark prosecution skills are also beneficial. When it comes to drafting and implementing global trademark projects, knowledge of the differences between various key jurisdictions is often appreciated by clients. It goes without saying that world-class trademark advisers must have a network of equally skilled colleagues in every jurisdiction.
Which trademark-focused case has been your most memorable or satisfying and why?
Each case is a challenge, so it is difficult to pinpoint a single case as the most satisfying. However, I previously handled a trademark opposition case for a non-profit organisation in Switzerland. In the end, our clients prevailed and the other side’s trademark was cancelled. Although the case was difficult and several instances (the Swiss Federal Institute of Intellectual Property and the Swiss Federal Administrative Court) were involved, after a number of years, we achieved a favourable result. As a contribution to the non-profit organisation, I refrained from billing the client for most of the work performed, asking only for a symbolic remuneration.
Finally, how different do you feel trademark practice will be in five years, and how can practitioners prepare for the future now?
AI and new software tools will substantially facilitate search-related work for trademark practitioners. However, the fine tuning required to take into account all relevant aspects of a search will, in my view, remain with experienced trademark attorneys for some years yet. On the one hand, it is hard to imagine a machine or an algorithm that can define the degree of inherent distinctiveness of a mark and, thus, its scope of protection. On the other hand, it will be a big help to have databases that reflect trademark office and court decisions regarding the similarity of goods and services. Paperless practice will be standard in a few years, which raises the demand for skilled employees with software capabilities.