In-house legal team turns to Barker Brettell for secondment support

Barker Brettell provided a secondee to join a UK automotive manufacturer for support with trade mark matters.

The challenge

The client was in the process of recruiting and establishing a legal team to specialise and focus on trade mark matters and asked Barker Brettell to provide secondment support during this period.

The company required flexible support that would meet its specific needs, therefore it was agreed that the secondment would be reviewed every quarter to discuss and implement any changes to the role.

The solution

For the first seven months the secondment was located full-time at the client’s office.

After this, the secondment continued for an additional three months on a full-time basis, the secondee splitting their location equally between the client’s office and Barker Brettell.

Expert knowledge of trade marks was required to fulfil the secondment role. However, Barker Brettell also had to fully understand the client’s needs to implement processes and procedures that would suit its business practice, and enable the resolution of trade marking issues that the company faced daily.

The Barker Brettell secondee worked closely with several of the client’s globally located teams including marketing, brand protection, aftersales, design teams, merchandising and national sales centres.

The secondment involved:

  • Advising on registrability of new trade marks including conducting trade mark clearance searches;
  • Setting up processes and procedures for dealing with various trade mark matters which the developing trade mark team could follow;
  • Managing a global trade mark enforcement programme to act against infringers;
  • Preparing and providing training sessions on trade marks to different departments within the company. Each training session was tailored to each department based on their interactions with the trade mark team and their role within the business;
  • Preparing content for the intranet site to assist with the internal education on trade marks;
  • Creating an evidence bank to store global proof of use of trade marks which can then be used to show reputation and use of trade marks to maintain and enforce trade marks.

The result

The secondment programme resulted in Barker Brettell building a long-standing relationship with the client. Barker Brettell has continued to second trade mark attorneys and trainee trade mark attorneys to the client on a part time basis whenever it has required interim assistance.

Over eight years, the firm has continued to assist and advise the client on trade mark matters ranging from the registration of trade marks and enforcement of trade marks to standalone projects.