The International Who's Who of Trademark Lawyers has brought together three of the leading practitioners in the world to discuss key issues facing lawyers today.
Fish & Richardson PC
New York, USA
Who’s Who Legal: How are the levels of activity looking at the moment for trademark lawyers? Are forecasts for the future optimistic in terms of the amount of legal work predicted?
Anthony Fletcher: One of my trademark prosecution and counselling colleagues answered this question: “Looking up, but not back to pre-recession levels yet.” My largest client is seeking more advice and filing more applications than last year, which was a big increase over the year before. Trademark litigation seems to be coming back too, with less inclination to settle. Counterfeiting work has remained pretty steady. Forecasts for the future are cautiously optimistic. I stress “cautiously,” because the past years have taught us that surprises can happen, we do not view the economy as completely recovered, and neither, apparently does the market.
John Hackett: In terms of current levels of legal activity in New Zealand, it is necessary to consider the following factors:
• our size – 4.5 million people;
• our isolation – a minimum of three hours flying to any destination north of Auckland;
• our economy, which is largely based on the export of dairy products;
• the effect of the global financial crisis on our economy;
• the effects of the series of earthquakes over the past nine months on our second-largest city, Christchurch; and
• the impact of a high US dollar for our exporters.
While these could all be considered as negatively impacting on our economy and legal activities, all of them equally provide positive opportunities.
Our major exports (around 25 per cent) go to Australia. With the Australian economy on a high, our New Zealand dollar relative to the Australian dollar is 75 cents. This provides a great incentive to build on our export markets and opportunities to Australia.
In relation to our reliance on export of commodities in terms of dairy products, our farming sector and its community are receiving very high prices currently.
Finally, re-building of Christchurch, once decisions are made as to how the new city will take shape, and once the quakes stop, will give rise to a large amount of construction-work and related activities, all resulting in increased employment.
So, while the outlook can be regarded as “cautiously optimistic”, we will continue to rely heavily on the Australian recovery, followed hopefully by recoveries in the USA and Europe.
Roddy Kyriakides: Here in Cyprus, I would endorse the general sentiment expressed by other contributors that in the last couple of years trademark lawyers have witnessed an overall reduction in the volume of trademark prosecution work as a result of the international economic recession. Recent levels of increased trademark prosecution work are encouraging, though the volume of this prosecution work has not yet reached pre-recession levels. These fluctuations in levels of activity have not dramatically affected trademark litigation work or anti-counterfeiting enforcement work, which has been relatively constant. Although brand owners have in recent years been more focused on budget reductions, when faced with trademark litigation disputes involving any of their core trademarks, our experience has been that our clients have not hesitated in taking appropriate legal action to safeguard their intellectual property rights. I agree with the cautiously optimistic forecast for anticipated future trademark work.
Who’s Who Legal:Our sources reported an increasing international awareness from clients in recent years. Have you seen any changes in this sector in terms of clients requiring broader geographical representation, and which qualities best allow firms to service international clients?
Anthony Fletcher: Not really. But, since the U.S. has undertaken to join the International Registration system, we have seen many applications for extension of International Registrations which, I believe, would have benefitted considerably from a better understanding of US trademark law. It looks to us like many foreign registrants are procuring US registrations that are very vulnerable to partial or complete cancellation. The international interest in obtaining US registrations appears to have outstripped understanding of the US registration system. US clients’ interest in obtaining EC trademarks has continued steady.
John Hackett: New Zealand has not yet implemented the Madrid Protocol, although this is expected in 2012. The problem with enacting such legislation is that our parliamentary term is only three years, and there always seems to be something more urgent or important in terms of new legislation being passed. As an example, why we expect it to be put back until next year, and possibly longer, is the Christchurch earthquake and emergency legislation required to make important decisions on re-building the city. Also, there is a general election this November.
Given this background, there is a lot of activity in terms of international filing, searching, oppositions, and litigation still apparent in New Zealand. Obviously, the global financial crisis has had an impact but we have noticed only a small drop (around 15 per cent) in terms of interest from international clients over the past three years. Also, our exports have still continued strongly, in relation to Australia, Asia and the Middle East. This reflects in our outgoing work to these areas for our local clients.
Roddy Kyriakides: The majority of our law firm’s trademark work here in Cyprus is for international (mainly US or European multinational) clients, who have been aware of the geographical significance of including Cyprus in their international trademark filing and anti-counterfeiting programmes for numerous years now. The fact that Cyprus has been part of Europe since May 2004 and that it has enacted national legislation to incorporate most of the significant international treaties involving trademarks, has also contributed to an increasing international awareness from clients in recent years. Our international clients in the context of trademark prosecution work cover Cyprus by national registrations and also by community trademark registrations and World Intellectual Property Organization (WIPO) (International) registrations, since Cyprus is a member of both the Madrid System and the Madrid Protocol. Moreover, the prior in-house trademark experience with international brand owner clients of various lawyers in our firm (including myself) assists in the better understanding of the commercial requirements of our international clients.
Who’s Who Legal: To what extent are technological developments and the internet affecting the practice of trademark law?
Anthony Fletcher: Release of new general top level domains in the near future has the potential to increase dramatically the burden on trademark owners to monitor and enforce marks on the internet. Obviously, the expanding development of the internet has made trademark enforcement an increasingly complicated undertaking.
John Hackett: Several huge changes in the practice of trademark law in New Zealand and Australia happened around 10 years ago. The advent of email communications and online searching and filing of trademark applications dramatically changed the way we conduct our practices. There have been incremental changes since then as systems have been upgraded and developed. Most firms now have sophisticated case record and document management systems and access to email and data 24/7 through mobile devices.
The internet and new technologies have also significantly impacted clients; how they do business and how they are using their trademarks themselves. Things like viral marketing campaigns and social media have changed the way we think about proving reputation when advertising used to be the only real world (TV/radio/print) thing a few years ago.
The online world has also created whole new ways to infringe trademarks, through domain names, and on websites, as well as online.
Anthony Fletcher: I agree with all of this; I was focused on a shorter period of time, and now regard much of it as “business as usual”.
Roddy Kyriakides: Technological developments and the internet particularly over the last five years have made the practice of trademark law more complex, more challenging and faster paced than ever before, for both trademark prosecution work and trademark litigation work.
The internet has facilitated data access and ease of communication on a constant basis and led to a dramatic increase in trademark litigation and infringement cases through the expansion of the domain name system, the growth of auction sites, b2b sites and social networking sites.
As a result, the methods of distribution and sale of infringing products by counterfeiters for example, have become more sophisticated and enforcement authorities and brand owners’ external legal advisers have had to devote more technical and financial resources to dealing with such matters.
While brand owners and their external trademark advisers can manage their trademark portfolios with an ever-increasing array of specialised software programs, instruction times and response times have decreased with the growth of email communications and the proliferation of smartphone mobile devices making working relationships both more efficient and more demanding.
Who’s Who Legal: Have you seen any significant new regulatory changes in your jurisdiction, or are there any impending changes in the pipeline?
Anthony Fletcher: Food and Drug Administration regulation of tobacco significantly affects trademarks and marketing campaigns used for tobacco products, and the recent re-recognition of the doctrine of defensive aesthetic functionality recently in our Ninth Circuit, while not a regulatory change per se, poses a serious threat to enforcement of certain kinds of trademarks that have large consumer followings.
John Hackett: As mentioned above, the only new regulatory change in New Zealand as it impacts on trademarks, is the Madrid Protocol. This has been on the books now in New Zealand for several years. While we are close, we are not holding our breath.
The impact of the new .xxx tlds will mean that our clients will need to take positive action to monitor and enforce their trademarks. While this is a complex procedure, and considered by many to be unnecessary, it needs awareness from us and our clients. Clearly, it will result in extra work for New Zealand law firms.
Anthony Fletcher: I would agree as the new tlds, when and if they come to pass, which it looks very much like they will. The .xxx tld poses the particular problem for prestigious marks that are plausible surnames (or even given names), that classy names will probably be attractive in the .xxx universe.
Roddy Kyriakides: Despite the countdown to Cyprus taking over the EU Presidency in the second half of 2012, we have not witnessed any significant new regulatory changes in the field of trademarks, since we joined Europe and the CTM was extended to cover Cyprus. In the near future though, we are anticipating some EU-wide modifications to the enforcement provisions in EU Reg. 1383/2003, which will affect the simplified customs procedure involving the seizure of counterfeit goods by EU customs authorities.
Lastly, I would strongly agree with John Hackett’s concerns regarding the global impact that the new .xxx tlds will have and that all our brand owner clients will need to be even more vigilant in protecting their trademarks from this new challenging development.