Holger Gensmantel, Carl Zeiss AG
In an exclusive interview with Who’s Who Legal, Holger Gensmantel discusses his role at Carl Zeiss, the qualities that make a successful trademarks lawyer, the German legal marketplace and the challenges of fostering innovation while adhering to regulation.
Over the last few years, the pace of global business has changed, with companies required to keep up with the modern world – one that is increasingly dynamic and constantly evolving. Businesses, and consequently their legal teams, now find themselves having to respond quicker to market needs, and strike a balance between observing legal limitations and pursuing innovative and market leading projects, all the while protecting and promoting their brand.
Carl Zeiss boasts a presence in over 40 countries, developing and distributing measuring technology, manufacturing equipment, microscopes, medical technology, optical and camera lenses and planetarium technology. With innovation at its heart since it was founded in 1846 in Jena, Germany, the company is constantly looking forwards, allowing it to successfully meet future customer needs.
I head Carl Zeiss’s trademark department. Our responsibilities include the worldwide handling of the group´s trademark portfolio, from trademark availability searches, applications, renewals, monitoring and defence, to enforcement and licensing agreements. Further, we advise our business groups in the fields of copyright and unfair competition law, including healthcare law. For example, we review advertising and marketing materials and concepts. We work closely with our colleagues from corporate communications, marketing and product management, as well as the legal department.
I do not think that the role of the in-house lawyer has changed so much over the past few years. But in a constantly accelerating age where businesses need to be flexible, proactive and timely in response to ever-quickening market-driven requirements, our internal clients certainly expect us to advise and respond more promptly. And they increasingly demand that we do not only give an assessment of the legal situation but that we understand the business and provide solutions for their specific problems.
We try to handle as much work as possible in-house. Of course, there are many situations where it is mandatory to involve external counsels, especially abroad. Apart from that, we engage external counsels in situations that require in-depth legal research and a comprehensive assessment when we do not have the time to do this ourselves, or if the matter primarily raises questions under foreign law.
Expertise and good judgement are key. Trademark law is not mathematics. A lot of questions require the ability to weigh different factors. It is not always easy to come to a clear result. I appreciate pragmatic lawyers who write and explain clearly, persuasively and concisely. Lawyers – in-house or external – who manage large trademark portfolios need a high level of organisation and discipline as well as a good and reliable team.
There is plenty of choice for clients. The German legal market is highly heterogeneous with large international law firms, highly specialised boutiques and medium-sized law firms, as well as small firms and numerous solo practitioners. There are good lawyers in each of these segments. Particularly in southern Germany, there are longstanding contacts between medium-sized law firms and SMEs.
In Germany, we have been mainly working with law firms of German origin. Abroad, we are working both with international and local law firms, many of whom have been working with us for years or decades. We put great emphasis in trustful and long-term relationships. This approach has proven its worth. With Zeiss being divided up into the four segments (semiconductor manufacturing technology; research and quality technology; medical technology; and vision care/consumer optics) and many products that are difficult to understand and explain in layman’s terms, it has paid off in many cases to work with lawyers that are familiar with the company and its products.
There are many. Together with our Chinese colleagues we worked on an unfair competition case after the adoption of a new advertising law in 2015. The Chinese State Administration and Industry Bureau has since strengthened the supervision of advertisement. Currently, we are seeing a significant increase in counterfeit products from China which are offered through different internet platforms. We are trying to find and shut down the source of the products.
There have been many changes in trademark und unfair competition laws in recent years. Luckily, most of these changes have been rather editorial and not substantive. The amendment of the Community trademark regulation in March this year has certainly brought some significant changes to the Community trademark (now European Union trademark) system. These changes certainly affect our daily work but do not directly affect our company or industries.
Sometimes it is. Legislation is not always keeping up with the economic development. For example, our medical technology business group has been working on an ophthalmic screening solution to enable targeted screening of diabetic patients for diabetic retinopathy. Diabetics will be screened at their existing points of care, like pathology labs, where they routinely visit for blood tests. Remote assessment by qualified ophthalmologists will provide a rapid evaluation and recommendation back to the patient. A business model that includes remote medical diagnostics raises many legal questions. In some countries, remote medical diagnostics are forbidden at all. In such a situation, it is not always easy to advise and to not appear as the brakeman. But I am convinced that innovation, success and compliance with the legal framework are not mutually exclusive in the long-term.
This is rather a question for the management. But I am confident that the company will master the challenges, uncertain economic situation in many countries, digitisation etc, and hope that we will continue the constant and healthy growth we have seen in recent years.