Focus on Barker Brettell: WTR EUIPO Filing Elite 2020

Head of Barker Brettell’s trade mark team, Catherine Wiseman, and trade mark partner Tracy Arch recently took part in a Q&A interview with World Trademark Review which was featured as part of its ‘WTR EUIPO Filing Elite 2020’ series. Here, both attorneys reflect on recent success, current challenges, and future ambitions:

What have been the highlights for the firm over the past year?

Catherine: We’ve had an exceptionally successful year, both from a business and professional perspective. Our combined UK and Swedish offering has resulted in statistics showing that as a European team, our Swedish office has been ranked as ‘Top Swedish EU TM Filer 2019’, barely one year after opening; and in UK statistics we are ranked in the top three UK filers of EU trade marks, with the team seeing a record 19 per cent year-on-year rise in trade mark applications. It’s also an honour to be recognised by fellow professionals, so maintaining our WTR gold ranking, being nominated for MIP’s ‘TM prosecution team of the year’ global award; and personally being named as a ‘Top 250 women in IP 2020’ by Managing IP for the third year running has made this year very special.

What would you say is the one key factor that leads to success when managing a trade mark filing practice?

Catherine: Team work is at the heart of our success. But I’m not just talking about the Barker Brettell team here – we consider ourselves part of our clients’ teams. This is not just marketing speak: by embedding ourselves like this we can anticipate what might be coming around the corner; increasing effectiveness, efficiency and positive outcomes.

Tracy: Both the attorneys and support staff in the trade mark team are engaged and dedicated. We enjoy a very low level of staff turnover, so many of us have over 20 years’ experience in the profession whether they are attorneys or support. Being a collegiate team, everyone has a job to do and knows how to do it. This level of knowledge and best practice enables us to offer the highest standard of service and advice.

What one piece of advice would you give young lawyers keen to develop a filing practice?

Catherine: Be available and be responsive – your Key Performance Indicator (KPI) should be to file the same day of instruction and to always acknowledge new instructions immediately. If you are able to be accurate and timely in your response it will make your clients’ lives easier. You’ll be surprised how many times clients notice that you are going the extra mile.

Tracy: Listen to the experience of others and think about the bigger picture. It’s going back to our last point: team work. Really knowing what your client needs rather than what they may think they want will help you offer pragmatic advice. In this profession, one size does not fit all; it is not a box-ticking exercise, so being able to offer bespoke advice and solutions is essential.

How effective do you think measures implemented by the EUIPO to minimise the impact of Covid-19 have been, and do you expect new practices or ways of working will be retained?

Catherine: We appreciate that at the beginning of lockdown it was a challenging environment for everyone. However communications surrounding impact on consequential dates on oppositions were unclear – different attorneys in our team were given conflicting answers – which were very unhelpful. The deferment of deadlines and the granting of extensions were useful, but each time they were announced at short notice.

Tracy: We welcome the decision to introduce a fast-tracking pro-bono scheme to support SMEs and feel that these types of projects will become more common place. This sector is the backbone of the vast majority of economies, so naturally Barker Brettell will be supporting this very positive move.

If you could make one change to the EU filing landscape, what would it be?

Catherine: Aside from the frustrations of Brexit, or wishing that we could forge some sort of reciprocal IP agreement between the UK and the EU, we’d like to see much more consistency in the approach to the registrability of English language marks before the EUIPO. We find that frequently, the subtlety or nuances of English language marks are not appreciated by the EUIPO and so marks are often accepted before the UK and Irish offices, but refused before the EUIPO. This inconsistency is difficult to explain to clients. A constructive approach which is offered by the UK office is to have objections reviewed by a more experienced or more senior examiner before final refusal is issued.

To read the full report, please click here. If you would like to discuss the trade mark issues touched upon in this article, please contact Catherine Wiseman, Tracy Arch, or your usual Barker Brettell attorney.