Intellectual property has a much higher profile

• Trademark attorneys will have a vital role to play in growing markets, becoming more competitive and managing risk
• There will be wider use of non-traditional marks, such as holographic, multimedia, shape, sound and smell marks
• Avoiding unfavourable brand publicity will be an even more important consideration for trademark practitioners

It is clear that trademark counsel will have to go beyond their traditional areas of expertise, but how far beyond? A number of trends in business and marketing suggest that trademark attorneys will have a vital role to play in growing markets, becoming more competitive and managing risk.

One undeniable fact is the growing problem of overcrowded registers, particularly in popular classes such as 5 and 9 and the service classes. Policy makers may eventually address this issue but in the meantime, in-house counsel will have to be creative in finding solutions – as many of them do already. That includes negotiating coexistence agreements and thinking carefully about specifications, but two other trends are likely to increase:

• what one former in-house counsel calls “innovating around marks”; and
• rehabilitating old brands.

Innovation will include wider use of non-traditional marks (something that marketing departments are likely to demand anyway) including new types of mark such as position marks, holographic marks and multimedia marks as well as shapes, sounds and smells. As the registers become cluttered with word marks, another effect of innovation will be exploiting logos without using words; this is also being driven by globalisation, as brands cross barriers of language and alphabet. Apple, Nike and Starbucks are just three examples of brand names that are used sparingly in marketing today. Finally, there will be greater use of hashtags (such as ‘#swoosh’ and ‘#shouldve’) and maybe even emojis in branding, and trademark counsel must establish whether, and to what extent, they can protect or control these.

The rehabilitation of old brands is more complex: some companies own brands that can be revived for the same or different products. For example, Aston Martin created excitement among car enthusiasts when it revived the Lagonda brand for its new zero-emissions luxury car (due to be launched in 2021). The market for second-hand marks is likely to become more active than it is already, with the growth of online brokers. One practitioner predicts that rather than trying to clear and develop new brands, “small businesses will buy trademarks off the shelf”.

Trademark practitioners will also have to respond to consumer and business demands. For example, it is probably already the case that it is as important to ‘own’ the domain name and Twitter handle for a proposed new mark as it is to own the trademark right. That will certainly be true in the future, at least for consumer-facing brands. Emerging technological changes could also affect the way consumers interact with brands. The sharing economy may change the way brands are perceived; if you do not own a car but just lease one to go to work and back, do you value the automobile brand? Similarly, if you buy something from an independent retailer via a marketplace such as Amazon, which brand do you have a relationship with – the supplier or the intermediary? Looking even further into the future, when AI can make purchasing decisions potentially without any human involvement, who is the consumer? And what is their connection with the brand owner?

These questions are likely to arise as the millennial generation become more active consumers, using tools such as the Internet and social media that are different to the channels used for branding in the past. Millennials also pose other challenges to brands: having grown up with music file-sharing, they may be more open to buying counterfeits. Meanwhile, they are likely to place greater emphasis on ethics and environmental issues and trademark counsel will need to respond to this. “Intellectual property has historically avoided politics, but the world has become more complicated,” says one in-house counsel.

The introduction of plain packaging for tobacco and other products is one example of that trend, and something that no practitioner can ignore, especially as many observers fear that similar restrictions will grow in industries such as confectionery, alcoholic beverages and gambling. Other areas where brands could come under threat include any allegation of bribery or unethical conduct, abuse of data or environmental damage. Unfavourable publicity, including the sharing of aggressive cease-and-desist letters, can quickly grow on social media, and trademark counsel must be prepared to manage such situations. “Intellectual property has a much higher profile than before and executives are aware of that,” as one practitioner claims. Another senior in-house counsel at a multinational company says the instructions from senior management usually state: “Promise me, one, you will win the case and, two, there will be no press.”