Expert Insight Into – Trademarks – Forresters

Touching on the challenges involved in advising SMBs and other parties on complex IP matters, with a particular focus on trademark law, here Lawyer Monthly hears form Steven Wake, Partner at Forresters, a UK and European intellectual property attorney firm with offices in Munich, Birmingham, Liverpool and London.

Steven started his working life as a patent attorney, became enamoured with trademarks, decided to devote his time to that area of the business, and hasn’t looked back since.


How does your firm’s expertise overcome recent challenges in UK trademark law and practice?

The main challenges faced by UK trademark attorneys on a day-to-day basis are changes in law and practice. I believe that the changes implemented over the past 10 to15 years have, in the main, benefitted trademark owners and encouraged them to make greater use of the trademark system. This in turn has benefitted our business.

The pace of change in the trademark environment seems ever increasing. Being able to adapt to change is vital. When recruiting we look for well-rounded individuals who happily adapt to change. This strategy has worked well. At Forresters we invest significantly in the education of trainees, and the continued professional development of qualified attorneys and administrators alike. This helps to ensure that our knowledge base is current and fresh and is reflected in the high level of expertise of our staff.

Over the last five years we have relocated all four of our offices to buildings with improved, modern and fresh interiors. This led to the creation of a more comfortable working environment for all.

Finally, we invest heavily in our IT infrastructure; we are ahead of the game as concerns our case management and deadline monitoring systems.


As a firm that counsels start-up businesses on an array of legal matters, what are the main principles you advise SMBs to adhere by?

Above all, IP is a very specialist area of the law and SMBs need to take specialist advice early on.

IP is not an unaffordable luxury; it is, more often than not, the main asset of a business. Once a SMB understands that point and invests in their IP, we tend to witness significant growth of their business. The opposite can also be said; businesses that view IP as a side-line don’t tend to grow in the same healthy manner. Fortunately there is a greater awareness and understanding of the value of IP now than 20 years ago, and so this advice is adhered to more frequently than before.

It takes time and effort to implement an IP strategy, but it’s time well spent. Those SMBs that adhere to this principle experience greater rewards five or 10 years down the line than IP shy businesses.

The value of an IP portfolio changes with time. It is imperative to review an IP portfolio on a regular basis, and we recommend at least an annual review. By reviewing the IP portfolio in tandem with the progress of the business, SMBs can easily detect gaps in their portfolio and fill them, ensure that valuable IP is maintained, and sell, license out or let lapse those rights that are no longer relevant to their business.

Lastly, in the case of branding in particular, it is crucial to maintain watching services to monitor the IP rights others are seeking. Such services can be provided on a trademark, company name and domain name basis. Watching services provide SMBs with the opportunity to become aware of potential problems at an early stage, and the possibility of nipping problems in the bud through cost-effective negotiations with the conflicting business.

Watching services for patents and designs can also assist a business in keeping abreast of the latest innovations in their field and by their competitors.


How has the firm’s 2008 re-branding impacted the work you do?

Prior to 2008 we traded under the names Forrester Ketley & Co, Forrester & Boehmert and Forrester Mostek. We took the decision to rebrand simply as Forresters for all of our business activities (being a name many of our clients were using to refer to us at that time). We created colourful, eye-catching branding and, importantly, we also adopted our slogan ‘Clear Direction’. We endeavour always to provide clear direction in the advice we give to our clients and in our internal communications to our employees; reflecting our slogan in our brand. It sounds obvious, but businesses have so many matters to focus on nowadays that it is essential to provide clear direction. A simple name and a simple but effective slogan reminds us to always provide practical, business orientated advice in a proactive manner, which makes life easier for the client. The provision of a responsive and tailored service and ‘clear direction’ has, we believe, aided client retention and increased new client referrals.


Forresters is considered one of the top global firms in IP, how do you uphold this reputation, and in what ways do you believe the firm sets a benchmark for the industry?

Forresters has thrived for over 130 years by adapting to change, keeping ahead of the game and by always listening to our clients.

On the issue of client relations, it is important to make life easy for the client, whether it is a SMB, large multinational or instructing attorney. We pride ourselves on providing a quality and responsive service. We are always looking at ways to improve, and by creating an open dialogue with our clients we are able to the tailor our advice to suit their requirements.


As implementing trademark protection can be lengthy and costly, how do you minimise this process for businesses you advise?

We meet with our clients to discuss their priorities, aims, needs, time frames, budgets, and generally to ensure that we fully understand their business. By taking a collaborative approach, and not having preconceived ideas about what should be done, we act as an integral part of our clients’ team.

Many clients do not have clear strategies; by meeting and talking we are able to suggest sensible, bespoke solutions that reflect their particular criteria. If a client has a big project we break it down into easily managed sections, so as to maintain a clear focus. We also provide updates on a regular basis, so that clients do not lose sight of the bigger picture.

Once a clear strategy is in place we can provide timescales for implementation and likely costs. While trademark registration processes can be lengthy and costly there are many ways in which we try and minimise time and cost by making use of various international registration processes and having agreed, streamlined working procedures, particularly when working with overseas attorneys.


How has your work changed on the back of the EU’s newly introduced Trademark Reforms?

Surprisingly little so far, many of the reforms introduced to date reflect case law decisions which are already common practice. Other reforms simply act to clarify matters, such as the renaming of the Office for Harmonization in the Internal Market (OHIM) to the European Union Intellectual Property Office (EUIPO), and the Community trademark to the European Union trademark.

The revised fee structure for EU trademarks may result in a drop in opposition, revocation and invalidation filings. This is because the official EU trademark filing fee now only covers one class rather than three. Previously applicants were tempted to (and did) file applications covering an unnecessarily broad specification of goods and services. This in turn led to registrations for trademarks which the proprietor had no intention of using. If the newly implemented structure results in less superfluous classes when filing fresh applications and upon renewal (as a similar fee structure has been implemented regarding renewals) this should lead to a register which reflects more accurately the commercial reality. We welcome this change as it means that clients will be able to free up time and budget currently used to prevent others obtaining rights which might weaken their portfolio and instead invest in the strengthening of their rights.

Following the 2012 ‘IP Translator’ case, the EUIPO changed its view that class heading wording was deemed to cover all goods/services in a class. Now the wording of a specification is read to encompass only those goods/services falling within its literal meaning, be it a class heading or not. The reforms included a provision under which European Union trademarks filed before 22 June 2012 and which covered a class heading, could be amended by notification to the EUIPO that the registration was intended to cover goods and services beyond the literal meaning of the class heading. Many continental European attorneys had been in the practice of using class headings and would have needed to take action to amend their clients’ registrations. Historically, we have rarely suggested that the class heading be used by clients when filing their trademark applications; we prefer to understand their business well and for them to file applications that reflect the nature of their business. By investing time with the client from the start, and discussing the specification they require, less objections are raised by examiners, less opposition, revocation and invalidation actions are encountered, and a more streamlined and cost effective filing strategy is created.

The reforms are being implemented in stages. We foresee the most interesting stage entering into effect next year when the requirement for a trademark to be capable of graphical representation will fall away. We are in discussions with clients regarding how that may affect what they are able to protect, and the potential value in doing so. In particular, sound marks should become easier to protect as we envisage sound files will be able to be uploaded and deemed an acceptable representation of the mark.



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