Alessandro Cimaschi

What are the key characteristics that you look for in outside counsel?

Choosing an outside counsel is not as easy as it seems. I like counsel whom I know I can trust to be smart, flexible and, especially, a good listener. They must be knowledgeable and have strong experience in their own jurisdiction, but also be international in the way that they manage their practice and deal with clients. I have always been impressed by those who show that they have studied our brand and have a good grasp of the key elements of our industry. I also consider how technological they are to be an important factor; not only with regard to their general grasp of technology but also how they use it to improve the service to clients. 

As in-house counsel for a large international company, looking beyond one’s local jurisdiction is crucial. How do you adapt your strategy to take account of jurisdictional differences? 

In my experience, it is all about mixing the following ingredients: 

• priority for the business, as some countries and/or geographical areas may be more important than others;
• priorities for the brand protection programme’s success, as investing in one region may bring benefits to broader activities;
• key brand elements that deserve protection, or that the protection of which can bolster the defence of the brand;
• local trademark law; and 
• practice quirks and costs. 

Of course, this is not an exact recipe, but following these parameters should provide a good combination of solidity, flexibility and sustainability.  

Are you implementing AI tools in your practice, and if so, which ones? What, in your experience, are some of the pros and cons of using such tools?

We are avid users of several third-party tools (for trademark searching, case law, portfolio management and renewals) that use AI in some way or another – but apart from those, we haven’t deployed any other gen-AI tool yet. I would like to stress “yet” as I have a series of use cases for gen-AI that, if successfully implemented, could represent a major advancement.  We have a company-wide gen-AI tool that I have been testing and for which I have created a trademark-specific prompt, but I expect that maximum AI will be embedded in our workflows in a couple of years’ time.   

How do you envisage brand portfolio management practices changing in the next five years, especially in the digital domain?  

The change will be radical. The successful management of a trademark (or design or patent) portfolio heavily relies on admin support; the numerous tasks are all essential but fundamentally easy to carry out (eg, deadlines and payments). In five years’ time, technology will be there to help with all of those tasks and more. In the same timeframe, all of the stakeholders in the field (ie, the national/regional IP offices) will increasingly be operating online. This will make real-time record verification a reality, which could potentially result in cost reduction and (hopefully) harmonisation.

In essence, technological advancement will empower in-house brand counsel and make them more independent. If the trend of moving towards a more use-based trademark system continues with this momentum, recording evidence of use – an often neglected but truly essential part of our work – will take up more and more of our time. Technology will certainly be able to provide game-changing help with this issue.  

In-house counsel are seeing increasing convergence in their roles, covering more ground from broader brand protection to copyright to trade secrets. How is this affecting your practice on a day-to-day level?

I don’t think such convergence is necessarily a bad thing. Personally, I like having a broad remit as it allows the deployment of an organic strategy across the board. It can be challenging to keep up to date with developments across all of those areas, but the benefit of having the control outweighs this issue. Further, technology will soon be able to help when it comes to being on top of everything.