Trademarks – a Changing Practice

Ronda Majure, Vice President, Head of Global Sales – ‎Thomson Reuters, IP Solutions at Thomson Compumark

Trademark practice is not an island; just as every industry has been impacted by globalisation, budget constraints and hiring freezes, so too have law firms and in-house legal departments. Trademark practitioners have had to change their thinking and readjust their workflow in order to be successful in this challenging environment.

Despite more cost-conscious brand owners, legal professionals are seeing a steady increase in clearance work, with a growing number of businesses focusing more on the commercialisation of their brand. According to the most recent statistics from WIPO (World Intellectual Property Organisation), the average annual growth rate in trademark applications has been between 6-8% for the last two years.

Not included in that growth rate are marks for which businesses decide not to seek registration.  For example, if the mark is not going to appear on a product and is being used for an internet advertising campaign or if the mark is going to be used on a seasonal product or if it the mark is going to be used on a sub brand of a global brand, they may choose not to follow the normal clearance and registration process. While it may seem cheaper in the short run, it is not without risk. Furthermore, the level of risk involved could be higher than originally thought. Trademark practitioners have had to tailor their approach and modify the search and filing strategy to make the risk level and budget acceptable to the client. The key is when trademark practitioners know the client’s business and its acceptable risk threshold, they are able to find the right solutions.

Technology is also considered to be an integral part of trademark firms changing models. Adopting the latest technology could provide the foundation needed to respond to clients’ differing needs. As the pace of business accelerates, meeting urgent requests for opinions on proposed trademarks is a major challenge. However, there are emerging technological solutions in this space designed to simplify the clearance process and put the power of search firmly in the control of legal professionals — technology that can allow informed counsel to be delivered on new brands faster and more efficiently, and that could  provide a more competitive offering for clients.

The current challenges of trademark practice, managing an increasingly complex digital workload within ongoing budgetary constraints, require law firms to differentiate themselves in order to maintain a successful practice in this competitive landscape. Whether that differentiation is special expertise in niche sectors, innovative forms of client service delivery and fee structures, or with the help of the latest technological solution, the most successful practices will be those that can do more with less.