The changing role of trademark counsel

This shift requires trademark counsel to have a deep understanding that extends beyond regulations to encompass their company's operations, its market positioning and the competitive landscape.

A complex role expanded

While trademarks are indispensable assets, today's in-house counsel must also consider the function of industrial design rights, whether registered or unregistered. Furthermore, they need to maintain a portfolio of domain names and social media handles, and they should be familiar with copyright laws, both as an opportunity to protect logos and creative works and to ensure they are not inadvertently infringing others' rights in their marketing. Finally, they should be cognizant of the scope of other IP rights, such as geographical indications for comestible and craft / industrial products.

It is a similar story when it comes to enforcement, where it is not enough only to consider actions before IP offices and courts. Mediation, as now offered by the European Union Intellectual Property Office (EUIPO) for certain proceedings, and arbitration will have a greater role to play, as will ways of settling domain name conflicts such as the Uniform Domain-Name Dispute-Resolution Policy (UDRP).

Brand owners also have to monitor online marketplaces for infringements, filing complaints where necessary, and may even have to take action for conduct carried out in a metaverse scenario. Additionally, when counterfeit seizures are made, there is a mounting obligation to ensure fakes are disposed of in a sustainable way to minimize environmental damage and waste.

The demands of modern marketing

Another reason why an in-house counsel need to consider a range of IP rights is that marketers are becoming ever bolder with the intensifying competition to reach consumers. For example, many service-oriented brands such as telecoms companies, banks and energy companies rely on registered colors and / or color combinations to stand out from competitors. Approaching the same need for distinctiveness from a different angle, Intel, Nokia, MGM, Twentieth Century Fox, PlayStation and Netflix have shown the value of having identifiable sounds, and Louboutin is just one example of a brand that has successfully protected a position mark (for its red-soled shoes).

Brands are also using non-traditional means to engage customers, including through social media campaigns, working with influencers and edgy advertising. Often, these require practical and speedy input from in-house counsel regarding the correct use of third-party rights and material, upholding brand consistency and the drafting of agreements for any necessary licenses or undertakings.

Ongoing compliance with national and international law

If one thing may be said of trademark law, it is not static in the face of technology. Governments frequently update regulations to address new hurdles, such as those posed by digital commerce, counterfeiting and shifting consumer behavior. Trademark counsel must stay abreast of these changes, advising their companies on how to remain compliant while continuing to protect their brands effectively. For instance, changes in the definition of what constitutes infringement or the introduction of new categories of goods and services can impact a company's trademark strategy, including in metaverse contexts.

Following on from this, trademark counsel have a role to play in regulatory advocacy. This involves engaging with policymakers, industry groups and international organizations to shape the legal environment in ways that benefit their companies. For instance, trademark counsel may participate in public consultations on proposed trademark laws or advance stronger enforcement mechanisms against counterfeiting.

By actively engaging in these activities, trademark counsel help ensure that new regulations are fair, balanced and conducive to brand protection while also aligning with broader business objectives.

How to deal with a reshaping profession

To effectively manage these changes, both in-house counsel and external advisors need to embrace a combination of strategic, technological and collaborative approaches.

1. Develop a strategic mindset

Trademark counsel must transition from being reactive to proactive, playing an integral part in the strategic planning of the company. This entails a high level of introspective acuity.

• Understand business objectives: Trademark counsel should be keenly aware of the company's overall business strategy, including market positioning, product development and long-term goals.
• Integrate with cross-functional teams: Counsel should work closely with marketing, product development and executive teams to ensure that trademark strategies are integrated into the company's core activities. This collaboration allows trademark counsel to anticipate potential risks and opportunities, providing guidance that is both legally sound and commercially viable.
• Conduct regular risk assessments: In-house counsel need to assess the brand portfolio regularly for potential risks, such as trademark dilution, infringement or changes in market conditions.

2. Enhance collaboration and communication

Given the expanding scope of their role, trademark counsel must enhance their cooperation with other departments and external partners. This implies diplomatic tact in the sense of acting as an ambassador for both the brand and the significance of IP itself.

• Work with external experts: Counsel should engage with external IP attorneys, consultants and enforcement agencies as needed. These experts can provide specialized knowledge, particularly in areas such as local trademark law, anti-counterfeiting measures and digital brand protection.
• Educate internal stakeholders: A crucial task is to inform internal teams about the importance of trademark protection and the legal implications of brand-related decisions. This can include training sessions, workshops and guidelines that help non-legal teams understand their function in protecting the company's trademarks.

3. Adapt to a world of digital marketplaces

Reaching consumers has never been so easy or so troublesome. Overcoming the difficulties while cultivating a strong brand identity takes preparation and forethought.

• Global portfolio management: It is essential to develop a comprehensive strategy for managing trademarks across multiple jurisdictions. This includes understanding local laws, prioritizing registrations in key markets and anticipating potential challenges such as language differences or divergent practices.
• Focus on digital brand protection: The prevalence of social media means trademark counsel need to pay special attention to protecting trademarks in the digital space.
• Prepare for emerging technologies: Trademark experts need to stay informed about disruptive technologies such as artificial intelligence (AI) and the metaverse to appreciate how these innovations may impact law and develop strategies to protect IP in adapting environments.

A greater duty of care

The changing role of in-house counsel reflects the growing recognition that trademarks are not just legal assets but vital components of a company's overall value. As such, these specialists are no longer just protectors of the past but also architects of the future, ensuring that brands remain strong, resilient and legally secure in an increasingly complex world.

A version of this article was first published in WIPR, issue 2, 2024.