Legal Briefing

What are the intellectual property challenges facing in-house legal functions in 2019?

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Intellectual Property, Reputation Management | 03 May 2019

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Intellectual property has become more and more important over the last two decades. No longer the domain of tech companies only it is something that all businesses should be thinking about, and, according to recent studies, it can make up around 80% of capital value in successful businesses.
Even members of the public are used to hearing the term ‘IP’ and know it to be important. Business leaders certainly know that it is something they cannot ignore. And yet it is still an area that is often not well understood.

Claire Breheny, senior trade mark attorney
Claire Breheny, senior trade mark attorney

Increasingly crowded markets make any competitive advantage through innovation, know how and confidential information more important. They also make brand and reputation more important to consumers and so more valuable. However, constant globalisation, access to online marketplaces and reducing cost of manufacture is making it easier to copy, as well as providing greater opportunities for businesses.

All of this provides increasing challenges for those who manage IP for a business – usually the in-house legal counsel. There is pressure to deal with it well because it has profile. However, it is not well understood internally and is seen as a cost centre so budgets can be challenging. The proliferation of issues online, coupled with the fact that many businesses are dealing with IP issues all over the world (even in countries where the business does not have other legal issues) makes it very difficult to manage in an effective way.

How is the UK legal profession responding to these challenges?

The law relating to IP is complex, and good legal advice is an essential starting point for any business looking to manage its IP effectively. The UK legal profession has a wide range of excellent specialist departments and firms providing advice relating to IP. The quality is high and the system in the UK (courts, judges etc) is advanced.

Richard Ferguson, trade mark attorney and solicitor advocate
Richard Ferguson, trade mark attorney and solicitor advocate

However, the complaint about the UK legal profession is that it is excessively expensive, and the focus is exclusively on the detail of the law. The latter is perhaps an odd criticism of the legal profession, but in a situation where the in-house practitioner is faced with a large number of issues, they generally do not have the luxury of treating each issue in the way that a UK law firm does. If you have one issue in one country, it is easy to look at it in a certain way. If you have a hundred issues in 35 countries, a different approach is required. Practical approaches and solutions are needed and this, in general, is not the forte of UK private practice.

A jack of all trades and a master of none?

At Stobbs, we have a very broad offering, but remain a niche firm. This breadth puts us in a category of our own – an offering designed specifically to meet the needs of the in-house brand legal counsel. We call our category Intangible Asset Management (IAM). To provide IAM properly we need to be a one-stop shop for anything to do with brand.

Emma Pettipher, senior trade mark attorney
Emma Pettipher, senior trade mark attorney

In this Stobbs is a unique firm. The World Trade Mark Review provided the following comment in 2016: ‘There was a gap in the market between law firms, trade mark attorney groups and creative brand consultancies, and Julius Stobbs has filled it.’

We have a wide offering. We believe that it is difficult to truly understand clearance strategy and portfolio management without being an expert on litigation and commercial exploitation, and vice versa. It is this holistic approach which enables us to optimise brand value for our clients.

We have extensive experience of dealing with intangible asset management for leading international brands. We have a deep understanding of the issues facing global brands and our capacity for tailoring a strategy to fit particular industries/markets/territories is a stand out feature. Our breadth of offering as well as approach is what characterises IAM.

Trade mark searching – freedom to use
Chris Slee, senior solicitor
Chris Slee, senior solicitor

Searching is an area of particular expertise. We have very comprehensive in-house searching capabilities (we can search flexibly in over 160 countries) and so can tailor an approach to most budgets and approaches to risk. We often find that our competitors deliver reports indicating that marks are high risk when the commercial/practical risk of objection is low. We deliver a commercial approach to searching to tailor the category of risk according to business objectives and to appropriately categorise a mark accordingly. It is essential to combine good legal analysis with a keen sense of what is practical.

Our in-house searches provide a good balance between cost and risk profile. The fact that we can do this in-house means that we can also turn these searches around fast if the situation requires it. We can devise a strategic approach that will work for you.

Trade mark filings, renewals and portfolio management

We have extensive experience and expertise in all aspects of portfolio management. Stobbs is one of the biggest filers of UK and EU trade marks. We regularly advise businesses on the differences in the systems across the EU and we can devise a strategy to clear a brand and secure protection with the minimum of hassle.

Geoff Steward, senior solicitor
Geoff Steward, senior solicitor

We take the view that our role with international work is not simply to pass on options and manage instructions. We should have knowledge of your business and aspirations, apply our expertise to any local advice that is received to provide specific, consistent and clear advice with particular recommendations.

We work closely with overseas attorneys all over the world who we ensure share the same ethos and approach to your work as we do. At Stobbs, this is not about reciprocity of work. We do not select attorneys on the basis that we think we will get work back from them, but on the basis that they are the right adviser, with the right approach. We know that this is not the standard approach in the industry, and know that this is a far more effective and valuable approach for a client.

We handle our own renewals. Your portfolio of registrations is a key asset. Your day-to-day attorneys should be involved in the process. They will produce renewal reminder reports to discuss with you. The benefit is that renewals can become part of your overall portfolio strategy, rather than an administrative afterthought. It’s an effective way of making sure the portfolio stays in line with your business strategy and you are not incurring unnecessary costs.

Trade mark watching

We partner with Corsearch for our watching service and we are able to offer very competitive rates. We are flexible as to how watch services are managed so that you receive watch notices and advice in a manner which is helpful and cost effective for you.

Brand audit and strategy (trade marks/designs)

At Stobbs, we don’t charge for a trade mark audit or creating a trade mark strategy. We see this as fundamental to delivering the level of service that we wish to offer . We are proactive in updating and revising your IP strategy and this is one of the ways in which we think we stand out.

Contentious trade mark matters

Registry proceedings – oppositions and cancellations: This is an area of huge expertise for us. We are the most heard firm in the UKIPO (in terms of contentious hearings) which gives us a unique insight into the workings of the office at the highest level.

We always apply our unique approach to these types of issues – always looking for a practical solution that will resolve things in a cost-effective way. However, if we need to fight to a conclusion we can do so, but our experience here allows us to do this without breaking the bank (we handle all hearings ourselves, for example, rather than instructing counsel).

Litigation: IPEC and High Court: We have a very experienced team of IP litigators, including the former head of IP at Macfarlanes.

We consider that an effective brand enforcement programme must include all possible options for escalation against identified infringements, including ASA complaints and more traditional litigation.

Lewis Whiting, trade mark attorney
Lewis Whiting, trade mark attorney

We use litigation as a tool to achieve the right commercial result. We can also handle such matters in a far more cost-effective way than most firms and understand the importance of being able to achieve results within a predictable and manageable budget.

We handle any brand-related litigation including before IPEC and the High Court. We have developed a unique and exceptional offering for managing IPEC litigation on the basis of predictable and manageable costs. We provide fixed costs for all work, and even do this for High Court cases, such that we manage these cases to stay within the cost budget so as to maximise costs recovery in these matters. We have a separate brochure available on how we handle IP disputes; please let us know if you would like a copy.

Design filings and renewals

Design rights form a key aspect of brand protection. Designs provide good value for money and are a versatile right that can cover everything from typefaces and packaging/trade dress through to software user interfaces.

We are experienced in filing UK, EU and international designs. The UK has recently joined the Hague System, providing us with the ability to cover a number of international countries within a single application.

As with everything that we do, we like to take a ‘brand’ approach to designs. For any product, service or brand name, we always ask: is there a designs angle? Should we be registering designs instead of/as well as trade marks? Would a design registration add to other possible causes of legal action?

Investigations: Brand Intelligence

‘Brand Intelligence’ is our own investigative company operated by ex-law enforcement professionals with expertise in the grey and dark web. We have access to a wide range of experts (including ex-GCHQ) and services, ranging from cybercrime investigations, desktop online scoping, anonymous investigations and physical surveillance work (eg for counterfeiting). Because they are part of Stobbs, our attorneys are able to interact with them more throughout an investigation to get the best result, without it affecting costs.

Trade mark and enforcement work often requires additional and deeper information. We were frustrated by the existing commercial investigations companies – they tend in our experience to charge a lot for a report that often does not move things forward enough. That is why we set up our own company in this field to enable us to provide bespoke and practical reports with full understanding of the objectives and brand strategy.

The level of intelligence we are able to obtain is at a different level than the companies we used previously and it puts us at an advantage in relation to traditional and online enforcement activities.

Domain portfolio management

Domains are an area of huge expertise for us especially in respect of strategy and conflict. We partner with a leading domain provider.

Their platform is state of the art, and we do not add any cost to provide it for you. We chose our partner because they were set up with IP issues in mind (the founders were trade mark experts). We white-label their online domain portal, giving you access via our website. We believe that having all of the data relating to your brand in one central place makes managing it a lot easier.

Our domain management platform allows you to take a hands-on approach and directly manage your portfolio yourself. You can access administrative information (invoices, portfolio, etc) and technical information (redirections, zone files, etc) and make changes to control your portfolio (renew, cancel, register, change technical and administrative information, etc) directly through the platform. We can provide logins with different levels of access, so that different people within the business can have access to some or all of your portfolio, as appropriate.

Alternatively, if you prefer, you can take a hands-off approach. We have a dedicated email address, domains@stobbsip.com, which is monitored by us and by our domain partner. You can email requests to register new domains, renew, make changes, etc and we’ll take it from there.

We usually provide a regular domains renewal schedule to smooth the management of renewals.

Online brand protection

It is impossible to run an effective brand enforcement programme without monitoring online activity. We can provide domain, content, social media and online platform watches separately or in a holistic package. Because of our flexible and innovative approach we can create a programme to suit most budgets.

Once we have a suitable data set we can review this to decide on an appropriate enforcement strategy. For example, identifying what types of activity are of most concern to you, and assessing which of those issues can be dealt with by a ‘standard’ approach and which will require more individual effort. We will agree fixed fees for filtering information in an agreed way so as to provide short and meaningful reports that will not take hours to review.

Once a strategy is agreed we can agree fixed monthly fees in one of two ways:

  • Fixed fees for a set of standard tasks, plus initial advice on more individual matters, with those individual matters priced separately; or
  • An overall fixed fee for all activity in terms of enforcement (including counterfeits and ticket touting).

We use a range of technology to help provide these services. The key is to analyse the data and the patterns to get under the skin of what is going on and provide a practical escalation strategy so as to really impact on the issues.

Licensing

This is an area of real strength for us. We cover all aspects of licensing including advising on suitable rights and all aspects of pricing and drafting contractual agreements. However, we also work with commercial consultants (who work through our team) to provide commercial strategy and exploitation advice. We love helping to develop licensing strategies for brands and other IP to ensure an optimal commercial approach.

We have a solicitor team (ten and growing), with expertise in drafting and negotiating sponsorship and promotion agreements, IP collaboration agreements, franchise and licence agreements and IP rights assignments. As a result of being an extension of our clients’ in-house team, we also assist where required with standard terms and conditions of sale/distribution and other commercial contracts (eg IT and service supply agreements).

We apply the Stobbs approach to this type of commercial work, so we use fixed pricing (not just for drafting an agreement but for negotiating to a conclusion) and our virtual in-house model, so we get to know what is important for your business when handling contract negotiations. We find that our approach relating to this type of work is unique in that we are full-service for all brand strategy work, including wider commercial relations which can impact upon the reputation of the brand, and operate a fixed cost model rather than letting hourly rates snowball beyond budget.

What is virtual in-house?

We characterise ourselves as a virtual in-house team. The idea is that we have the range of expertise of an external private practice firm, but operate as if we are part of the team. Accessibility, integration, internal knowledge, clarity and simplicity of advice, transparency of cost (including things that encourage more contact like free meetings and calls and all-encompassing retainers) all contribute to this unique approach.

What about technology? How will this impact on brand protection moving forward?

Everyone is talking about how technology will impact on the provision of legal services. We already embrace technology. Use of third-party technology is an essential part of being able to provide access to portfolio data for our clients, provide domain management services, conduct cost effective searches, or provide good online brand enforcement services. Part of our offering is to be an expert on what is available in our space so as to be able to pass those benefits on to our clients.

However, at Stobbs we know that the world is not standing still, and we are investing in three different areas from a system point of view, all designed to be able to make more aspects of what we do more and more accessible and cost effective. We are looking forward to rolling some of these developments out over the next 12 months and improving our offerings still further.

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