What is your current role?

I head the trade mark department at Syngenta. I've been at the company about 20 years, working as a trade mark attorney. Before that I was with Novartis, which Syngenta was historically a part of, and before that at BASF.

Our wider trade mark team currently has about 10 people, including outsourced resources/functions, and it often feels like we are world champions in outsourcing! We are responsible for trade marks of course. We used to be responsible for domain names, and are still called on to help with that sometimes. Infringement work is mainly handled by our security team and commercial counsel but we do some of that work, too. Responsibilities change from time to time.

The trade marks are mainly around crop protection products (chemicals and biologicals) and what we call seeds, which in reality is everything to do with plants. Our portfolio is over 30,000 marks but this is also in flux: Syngenta was acquired two years ago by a Chinese entity, and we are still consolidating the portfolios with our sister companies.

I like the global work of trade marks. Our headquarters is in Switzerland but in the space of one day I could be working with China, Brazil or the United States! We are a relatively stable department so having a good historical knowledge really helps, being faced with many changes within the marketing groups. Our team is very global and we have people from all nationalities so the main language is usually English.

How did you start working in trade marks?

It was luck: I studied at law school and later did an LLM in the US. Then I started a doctorate on international civil law but I had to change to a trade mark topic, and I focused on new types of non-traditional trade marks. I was offered a temporary job at BASF to cover for a trade mark lawyer who was on maternity leave. I considered joining a big law firm but then I received an offer from Novartis, which is based just 15 minutes from my home town, so I accepted it.

How long have you been involved with MARQUES?

I got involved thanks to my former boss, Jane Collins, who also became MARQUES Chair. She said it is very good for learning and for networking with other brand owners and outside counsel. My first Annual Conference was in Prague in about 2003 and I really enjoyed it. There were about 400 or 500 people.

I joined the Cyberspace Team and then moved to the Anti-Counterfeiting and Parallel Trade Team, which I headed for a while. That worked very well as I was doing a lot of infringement work so I knew about the main issues. I moved to the China Team, which was very small back then, and then moved back to the ACPT Team. I've also been on the MARQUES Council and involved with planning some of the meetings, so it has been a lot of work.

I think my favourite conference was the one in Baveno, Italy. It was a special location and it showed that you don't have to be near a big city or airport to have a successful conference.

What are your priorities as Chair?

One minimal goal is to keep MARQUES alive, relevant and attractive despite the COVID problems. We must still be accessible in person as much as possible, so we plan to have a hybrid Annual Conference this year. Hopefully this will be able to happen. And before long hopefully we will all be able to see each other again in person!

The other priority I see is to bring the brand owner into focus a bit more. That is what distinguishes MARQUES and it is at our core. We now have the Brand Owner Task Force, which helps all the other Teams to develop topics that are relevant to brand owners. The practitioners of course also bring a lot of expertise to MARQUES but we should never lose sight of our roots. We would love to have more brand owner members: Of course it is an investment, but I think the benefits are very clear.

For me, MARQUES is like a one-stop-shop for brand owners. Particularly thanks to the Teams, we can provide guidance and advice for brand owners as well as a connecting platform to other brand owners and practitioners. And we always cover relevant, interesting topics.

What are the key challenges at the moment?

Online infringements and how to tackle them are a big issue. Privacy rules make it hard to find infringers. You can take things down but they often pop up again. With more commerce going online, we need better solutions for this problem.

The huge number of trade mark filings, particularly in China which has 9 million filings per year, is another issue. So we need to focus on the examination and opposition processes. If the Registry becomes blocked, it is impossible to search. You can never say: There is no risk!

Online filing makes it easy and people think they don't need agents, but without knowledge about classification and sub-classification and so on, you can run into problems. You always need expert advice. I think in-house trade mark lawyers are more and more shifting to counselling and strategy, because the actual filing work can be handled by paralegals or is outsourced.

One thing we see in Switzerland, where there are many international companies, is that we have to use the Swiss office as the basis for international marks. We are now thinking about using another office in some cases, as the Swiss office is very strict on e.g. brands deemed to have some geographical significance and we sometimes lose priority.

Another trend we see is that for infringement work you often need a different breed of lawyer, which often does not exist in-house in typical trade mark departments. You need to know about civil and criminal work, investigations, Customs cooperation and litigation, etc., so correct management of our external lawyers is also very important in this area.

I hope these sorts of topics are ones that MARQUES can address, including how IP work will evolve in the next few years. Of course, every company is different but we do see some similar problems. And particularly as many companies outsource work, it is very useful to share knowledge and compare experiences with colleagues from other businesses.

What do you think trade mark work will be like in five years' time?

Companies will try to save costs, do more online and outsource but they will realise they need to keep a relevant degree of know-how within their teams. In particular, trade mark teams will have to take infringement more seriously and take responsibility for dealing with it.

One topic we will all be focusing on more and more is sustainability. You have to tell a different brand story and there are new products and campaigns. You also have a lot of abuse and counterfeiting. It's broader than you think: it's not just about having a canvas bag instead of a backpack at the conference! It's at the heart of many companies now. We have to stop and think about what companies in many industries are doing and what they need to know.

Unsubscribe:
You can unsubscribe from this emailing list or change the frequency and type of information you receive from MARQUES at anytime by logging into the MARQUES website and clicking on the Preferences tab in the My Profile section of the My Account page.  Alternatively you can reply to this email with the subject 'NewsChannel - Unsubscribe' to be removed from this mailing list.