This week, WTR will be publishing its annual Global Leaders supplement, in which a select number of the trademark elite reflect on their professional journeys and offer insights and guidance into career development, practice management and trademark industry trends. 

In the 12th instalment of our series presenting key takeaways from these interviews, we ask trademark practitioners around the world what long-lasting effects they expect the covid-19 pandemic and latest technological trends to have on not only their individual IP practices, but client demands and the brand protection landscape as a whole.

Firms will need the latest technology to remain competitive

“Things are changing so rapidly, it is difficult to say what is around the corner,” admits Jonathan Chu, partner at CMS. “What we can see from recent events is that those businesses that are digital in nature or have become digital are reaping the benefits of their form of business delivery.” If the covid-19 crisis has taught us anything, it is that only organisations with the technology in place to operate anywhere, at any time, will survive. Thankfully, the innovative nature of intellectual property means that many in the field have already shown willing, and this should lead to greater efficiency in the long run. “In general, e-filing services and the courts’ evolving willingness to adopt technological solutions could make IP firms and practices operate even more efficiently,” Chu suggests.

“There has been an undoubtable shift online,” reiterates Marina Perraki, partner at Tsibanoulis & Partners Law Firm. “From teleconferencing with clients, colleagues and counterparties to online trials, trademark office actions and even global or regional conferences, it is clear that we have entered a new online era, where work, communication, education and even justice can be achieved through our computer screen with the press of a button.” In fact, Paul McGrady, partner at Taft Stettinius & Hollister LLP, doubts whether firms will ever return to the old ways of working. “The recent pandemic will accelerate what was already a big shift toward remote working,” he muses. “It is hard to imagine that most of Generation X and younger individuals will want to revert back to the commuter slog that consumed large parts of our day.”

But the shift to a fully digital realm is not without its drawbacks. “The implementation of the remote work environment is reverberating throughout the legal field and legal practice,” says Michael Kelber, partner at Neal Gerber Eisenberg. Despite having the IT infrastructure in place to adapt well to this, though, Kelber is keen to restore in-person client contact when it is safe to do so. “It is my hope that in the not too distant future we will regain the ability to meet face to face with our clients,” he says. “At my firm, we are lucky, because we have a high comfort level with telecommunications... But meeting the needs of our clients and fostering and maintaining those long-term relationships is crucial.”

Certain tasks will have to be automated to meet client demands

All this technology does not come cheap, and a covid-related global recession means that most IP firms and practices will be feeling the pinch. “Brands will be more and more resource-challenged,” admits McGrady. “Advice will need to be even more concise and practical.”

The increasing pressure to deliver more for less is a natural concern for many. “The financial crisis caused by the coronavirus pandemic will make the international IP market even more challenging,” agrees Spring Chang, founding partner at Chang Tsi & Partners. “Only those that can provide quality and cost-effective services tailored to clients’ needs will survive.”

But again, technology could be the answer. “At our firm, we are cooperating with leading robotic process automation (RPA) professionals to introduce RPA and AI to our management processes, in the hope of reducing costs and increasing the accuracy of work management,” says Chang.

Indeed, AI tools are already being utilised in trademark searches. “In Japan, some firms have started to develop new trademark search systems using AI technologies,” reveals Kumpei Kogure, managing partner at BORDERS IP. “Their evaluation of trademark similarities is said to be generated automatically by deep learning based on past appeal decisions… Although its quality is not yet perfect, we can at least use the technology as a support tool for manual searches to save time and reduce human errors.”

Camille Miller, co-chair, IP department at Cozen O’Connor, also sees smaller, specialised teams as the next step in a business-focused approach. “Given the acceleration of technological advances, coupled with client billing pressure, I expect that in the future, we will see certain tasks being automated, along with perhaps smaller teams with a higher proportion of focused expertise – both in terms of having higher skilled, more specialised and more business-minded attorneys, and in having paralegals with legal degrees and substantive IP and possibly even IT backgrounds,” she states.

Trademark practices will increasingly focus on online disputes

It is not just IP counsel who are seeking out the latest technology to help meet developing client needs either. With communities in lockdown, a record number of people are logging on for goods, services and a sense of community, meaning that brands must keep pace if they want to meet consumer demand – and where brands go, counterfeiters quickly follow.

“I expect that we will see a substantial shift in our trademark practice to the online realm,” says Selma Ünlü, senior partner at NSN Law Firm. “We will address more and more disputes over trademark applications, domain name disputes and illegal use of trademarks online, particularly on social media platforms and online marketplaces.” With this shift comes a host of new challenges, she says, “including determining the responsible individuals or the production centres of counterfeit goods”.

This is something that Rahul Chaudhry, managing partner at Rahul Chaudhry & Partners, is already tackling. “Brand owners and consumers are witnessing a rise in the number of counterfeit products available for sale online and in physical stores, especially considering the high demand for personal protection and hygiene products,” he notes. “There have already been news reports of fake sanitizer factories being uncovered in different parts of India. Hence, the most important, long-lasting step is to ensure that brand owners have the necessary IP protection in place, while actively monitoring online and physical channels for identical or similar brands, the marketing or sale of suspected counterfeit or lookalike products, and considering all enforcement options that can be taken presently or as and when lockdowns are relaxed.”

“Encouraging brand development through e-commerce platforms is essential,” he continues. ”Brand owners should look towards investing in digital and online marketing, as there has been an upward trend in the use of e-commerce and online payment methods. Digital savviness will remain crucial as retailers and brands adapt to consumer preferences shaped by the pandemic.”

Anand and Anand managing partner Pravin Anand agrees. “Branding on the Internet will become increasingly important as companies shift a greater proportion of their strategies online,” he says. “Simple things like widely protected domain names, quality websites and blogs, as well as building digital skills and increasing your social media presence, will all be essential.”

Budget cuts may lead to registration culls and outsourcing of renewals

From a corporate perspective, though, future budget restraints loom large. “Trademarks will continue to be a key asset to corporations and of great import to the balance sheet. As such, important trademarks will still to need to be registered and enforced in key sales countries,” says Joseph Conklin, senior vice president and global deputy general counsel at Coty Inc. “That said, especially coming out of the covid-19 pandemic, there are sure to be intense budget pressures and perhaps a culling of registrations in jurisdictions that are not critical from a sales perspective will become a focus.”

Venable LLP partner Andrew Price agrees. While IP rights have never carried more weight, brand owners may need to reassess their filing strategies to save costs. “In the age of the coronavirus pandemic and the increased importance of brands online, IP owners have shown a stronger interest than ever in enforcing key brands and developing new ones that can deliver a wide range of protection. This interest will likely continue as economies rebound, but in the meantime, clients may make room in their budgets by weeding out underperforming and borderline brands.”

“Cost concerns may also lead to more outsourcing of matters such as renewals and docketing,” continues Conklin. “With cost concerns, return on investment on litigation activity will become even more of a gatekeeping analytical exercise before commencing a lawsuit or in considering defence and settlement issues.”

That said, Kelber does not see litigation levels falling dramatically. “In the short term, the pace of litigation has slowed,” he admits, “but we anticipate courts adapting, perhaps through the use of virtual/video depositions and other legal telecoms applications, for legal practice to keep up with the times”.

Licensing and innovation will be key to regrowth

Clyde & Co LLP partner Elliot Papageorgiou takes a less optimistic view. “I fear that for some countries, and indeed companies, IP protection and even enforcement may fall off the radar,” he warns, recalling a similar de-prioritisation after the 2008 financial crisis. “While it is understandable that countries and companies trying to recover from the crisis must first focus on rebuilding their industrial positions, the sooner they re-prioritise IP protection and enforcement, the quicker the path to economic growth can resume.”

Jurg Simon, partner at Lenz & Staehelin, is also concerned about a fall in IP investment. “General economic development – which is equally difficult for experts to predict – will also affect the legal market and the IP sector. This could have an impact on willingness to invest in intellectual property or to really enforce IP rights,” he warns. “However, it could also mean that intellectual property will be used more in cooperation platforms (eg, technology pools). IP licensing as a business model could experience an unusual upswing if it is possible to keep licensing costs lower than development or production costs. This could well be possible if economic development remains uncertain for a longer period.”

As such, he is hopeful that IP activity will soon bounce back – with a renewed focus on licensing and innovation. “Looking beyond the economic crisis shows that although these crises always affect the consumption and production side, they do not usually affect innovation or marketing. As the saying goes, ‘necessity is the mother of invention’. In this respect I am not pessimistic. But who knows? What the world is actually experiencing right now is beyond expectation.”

The question, then, is how to prepare for the unknown. The answer is two-fold.

WTR Global Leaders 2020 will be published on 9 September. Other articles in this insight series include:

  • “Become business partners” and “prepare for the long game”: six tips for stakeholder buy-in and resource management? Read more here.
  • The six signs of an accomplished leader. Read more here.
  • “It is part salesmanship, part showmanship”: how to build a sturdy practice. Read more here.
  • Tips for obtaining well-known status in China. Read more here.
  • From classroom to boardroom: why practitioners must do more to raise IP awareness. Read more here.
  • “Never relax your guard” and “tailor your strategy”: the biggest challenges facing brands and how to overcome them. Read more here.
  • Five ways to beat the odds and protect your brand in Asia. Read more here.
  • Stakeholder buy-in, new AI tools and improved compensation: how to make change happen. Read more here.
  • “Brands must adapt or be eaten”: WTR best in class on fighting domain name abuse and online infringement. Read more here.
  • How to promote diversity and inclusion in the IP workplace. Read more here.
  • Top tips for a successful cross-border IP strategy (and partnership). Read more here.

This article first appeared in World Trademark Review. For further information please visit https://www.worldtrademarkreview.com/corporate/subscribe