Introduction: the changing role of trademark counsel

There is probably no role in the IP world that is likely to change as much in the next decade as that of the in-house trademark counsel. Business demands, cost pressures and technology developments will remove or simplify many of the tasks undertaken today by trademark departments. Others will be outsourced to service providers or, in some cases, computers.

The good news is that trademark counsel are better placed to adapt than many other IP practitioners. They have already begun to feel the pressures of tighter budgets and the effect of automation on certain tasks. If, as is likely, they will have to take on different roles and responsibilities in the next few years, many of them will be able to do so. On the flipside, failure to adapt to new roles and requirements will leave counsel struggling to remain relevant in their organisations.

There are likely to be many new roles that trademark counsel will take on. Counterfeiting will pose more of a challenge as it increasingly moves online, while new markets will present both opportunities and threats. Regulations on advertising and packaging will become more complicated to navigate, and the penalties for misbehaviour are likely to become more severe. Globalisation and modern media could potentially lead to fundamental changes in the way that consumers engage with, choose and understand brands.

These will require trademark practitioners to move beyond their core skills into areas such as technology development, public policy and brand management and valuation. Those that can adapt will flourish and find that there are opportunities out there that are more rewarding and fulfilling than much of the work they have done in the past.