Data: the biggest challenge

• Managing data, making it accessible and identifying patterns will be key for all IP practitioners
• There are big practical challenges in compiling useful databases and storing them
• As has been seen with the WHOIS records debate, GDPR has the potential to clash head on with IP rights

One thing that is common to many of the developments discussed already is the importance of data. AI tools depend on data, as does effective anti-counterfeiting. Managing that data, making it accessible and identifying patterns will become more important not just for trademark lawyers but for all IP practitioners.

At one level, there are questions to be addressed around the ownership of data and these are discussed in more depth in our report on in-house patent departments. Putting these questions aside, there are big practical challenges in compiling useful databases (eg, covering decisions, records and examples of use) and storing them.

Some in-house counsel fear that these questions around the collection of data could present fundamental problems to trademark practitioners in light of the EU General Data Protection Regulation (GDPR) and similar data privacy legislation in other parts of the world. As has become alarmingly clear this year with the debate over WHOIS records, GDPR has the potential to clash head on with IP rights.

In addition, this will not be limited to domain names. Wherever a trademark owner has contact with an individual as a consumer, competitor or counterfeiter, they are likely to have records of that person. Particularly in the case of counterfeiting or piracy, that might include personal information. Indeed, investigators are likely to seek information such as the individual’s online history, physical location and social media pages as part of their research. The individual could then file a complaint under GDPR. One former in-house counsel believes this is “the biggest challenge in-house IP counsel will face, particularly if you are gathering data without consent, or asking investigators or lawyers to do it”. He adds: “I expect to see data protection complaints filed by anyone who gets sued by big brands.”

INTA has recently set up a committee on data protection, and it is something that is likely to become a much bigger part of the daily work of trademark counsel – particularly as the fines for misuse of data are so significant. As the same former in-house counsel espouses: “Do you have a data protection officer? Do they know what you are doing? A lot of in-house departments need to fix this.”