International IP, Indonesia IP, Taiwan IP and Russia Trademark Firm of the Year: Baker McKenzie

Q: What IP challenges are being raised by clients most frequently at the moment?

A: Clients need to rethink their approach to protecting intellectual property. The world is changing rapidly, creating new opportunities and challenges. Innovation cycles are being affected and digitalisation is a tool as well as a challenge. Many clients are facing complicated questions such as: How do we best utilise the different IP rights and regimes to meet the needs of the business? Do we need to protect all the intellectual property that we own? Are we tracking all key assets? Have we explored all the opportunities or are we missing anything? Are we commercialising our intellectual property in the right way? Do we need new tools?

For many of our clients, IP challenges include:

• enacting procedures to prevent cyber breaches;
• recognising the broader dangers of copyright and trademark infringement, which may include image and brand value depreciation; and
• developing methods and implementing policies and protocols to preserve trade secrets.

Our clients are concerned with the risks posed by IP claims brought by others, which can result not only in financial costs such as fines and legal fees, but also in the negative effect of unwanted publicity. For global clients in particular, having a cohesive strategy across the relevant jurisdictions in which they do business is a key requirement. Our ability to provide local advice, as part of a comprehensive global strategy, is one of our key strengths.

Q: What is the biggest challenge currently facing IP law and attorney firms?

A: IP laws are evolving in the digital age, reflecting various technological advancements, including the Internet of Things, blockchain, AI, 5G and cloud computing. While the law plays catch up, this ever-changing landscape poses various challenges to IP lawyers, rights holders and legislators as they navigate IP strategy and management, including the following:

• New IP-based business models are emerging – there has been a resurgence of trade secret protection, which can be a quicker and less expensive way to protect technological developments than patents.
• Non-traditional trademarks are increasingly critical, reflecting changes to the consumer environment and various countries have overhauled their trademark laws to reflect this.
• Brexit will have far-reaching implications, including for intellectual property and technology.
• Digitisation has reduced the creative industries’ ability to generate revenue from their copyright-protected works. The controversial new EU Copyright Directive aims to re-calibrate the balance of current protections in favour of rights holders. Similar developments can be found in other jurisdictions – site blocking, notice and take down requests, and the three-strikes rule are now available as remedies in Canada, China, Russia and the United States.

Left to right: Grace Shao, Denis Khabarov and Daru Lukiantono, partners

Q: AI has been a big talking point over the past year – what impact do you think it will have on IP practices?

A: AI has the potential to automate many time-consuming IP tasks, increasing the ability to analyse large amounts of data in a short timeframe. Technology has already changed many areas of legal practice and we predict that AI will continue to enable practices to work more efficiently. Supporting strategic trademark litigation advice, AI software that forecasts a potential litigation outcome uses data from existing case law or a judge’s or rights holder’s previous actions to identify underlying trends. All this will affect how we practise law and advise clients.

Commercial AI-generated content and inventions also pose challenges for established IP legal concepts such as that of ‘author’ and ‘inventor’, and the law may have to find novel criteria to decide whether works created by AI qualify for copyright and patent protection. Within the context of machine learning, processing large data sets may constitute infringement if that data is protected by copyright. Equally, AI technology will affect human-centric trademark concepts such as the ‘average consumer’.

Q: If you could make one change to the IP world, what would it be?

A: Companies invest considerable time and effort developing their intellectual property. With technology and the world around us moving at an unprecedented pace, the time that it takes for legal systems to develop new laws and adapt to the new commercial reality can seem painfully slow. Consequently, waiting for the legal framework to address new business models, transactions or opportunities can be stifling to business innovation. Worse yet, some companies can profit from this delay through trademark infringement, theft of trade secrets or cyber hacking. While navigating these issues is a challenging yet often enjoyable task, we would like to wave a magic wand and have a legal framework that is nimbler but no less thorough.

Q: Are there any particularly notable cases that the firm has handled?

A: In Taiwan, we filed provisional injunctions and civil complaints against a client’s two former vice presidents (VPs) for violating non-compete provisions and misappropriating the client’s trade secrets, after they joined a competitor in China during their non-compete period. We helped to obtain a provisional injunction to prevent the VPs from working for the client’s competitors in China. While the case was pending in the Taiwan IP Court, the defendants accepted all our requests and settled. This shows the importance of taking effective action at an early stage when competitors attempt to steal trade secrets by hiring a company’s former employees, especially in cross-border situations.

In Russia, we acted on behalf of Gilead in relation to a challenge to its patent for its blockbuster HIV medication Sovaldi (Sofosbuvir), brought by a large Russian producer of generic medications. The case involved a thorough review and analysis of complicated questions in the area of stereochemistry, as well as complex legal issues related to the construction of various criteria of patentability under Russian law. We utilised our in-house technical expertise to deliver this complex matter to the court in a simple, understandable manner. The case was decided on the merits without the need for complicated and expensive patent forensic examination, saving a lot of time and effort, which is very unusual for this type of issue.

We have also been advising a multinational food and beverage corporation on a copyright enforcement case against a local Indonesian snack manufacturer following the unauthorised use of TV advertisements in Indonesia that are similar to our client’s TV ads for its snack products. We have been managing the company’s trademark portfolio, giving advice in connection with the copyright infringement and representing the client at the settlement negotiation with the counterparty. This matter is important because the local snack manufacturer is a major player in Indonesia, sharing the same consumer base as our client. The continued use of infringing TV ads may confuse the public, who might assume that the snack products manufactured by the counterparty are a variation of our client’s products.

Q: Finally, what qualities make for a successful IP attorney or lawyer?

A: IP law is changing so rapidly, it is critical that we remain informed on proposed changes so that we can advise clients on the necessary compliance steps well before the legislation takes effect. We must not only be aware of these changes, but also understand and appreciate how they affect our clients’ businesses and advise them on what commercial response, if any, is appropriate.

A successful IP lawyer will understand the need for ongoing education in terms of both legal developments and industry knowledge, in order to remain informed and relevant to clients in this competitive business climate. They must be able to adapt to rapidly changing regulations seamlessly and must strategically assess the potential risks involved in new products and designs.