Choose foreign counsel carefully, says Teva trademark head

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Choose foreign counsel carefully, says Teva trademark head

Larry Rickles, chief trademark counsel at Teva

Finding the right outside counsel and developing proper processes for search, clearance and filing are crucial to trademark prosecution outside your home jurisdiction, said Laurence Rickles

At this year’s Managing IP Global Trademark Forum in New York, Teva’s chief trademark counsel delved into the tumultuous world of foreign trademark work and gave advice on the best way to handle it

Laurence Rickles, who has been at Teva in New York since 2015, kicked off the session on Tuesday by advising delegates to choose their foreign external counsel carefully.

“Outside the US, it becomes difficult to work with local laws and customs, and you must rely on good external counsel to a certain extent,” he said. 

He said that membership of INTA is probably the lowest bar for entry for a new outside counsel partner, and that if a law firm was not a member of that organisation, he would probably question how much trademark work it really did.

Beyond that, he said, he has found referrals to be particularly useful when picking law firms in the past. “Often I will go to contacts or former colleagues at Novartis or Johnson & Johnson and say: ‘Hey, who do you use here?’” 

Another industry speaker on the panel noted that an in-house lawyer’s choice is also likely to be influenced by the law firm’s client service record. If the firm can offer fixed fees and is known for being communicative, it is far more likely to be picked by an in-house person who doesn’t know a jurisdiction particularly well and has few pre-existing relationships with other practices. 

“I imagine I’m not the only in-house person who gets pressure from finance to find firms that offer fixed fees. Those fee arrangements are quite common in the US, but are often difficult to find elsewhere.”

Country of choice

The next piece of advice speakers gave was not to conduct searches in every foreign jurisdiction. “You’re not going to do full searches in every country,” said Rickles at Teva. “Searching in 220 countries would be incredibly time consuming and expensive, and there are various ways to cut down this effort to make it more cost-effective.”

Speakers noted that counsel should also be aware that there more cost-effective ways to file trademark registrations than on a traditional country-by-country basis. Rickles said that in the EU, for example, it is a no-brainer to apply for EU trademarks rather than individual French, German or, until recently, UK marks. 

“We’ve also been trying to nudge paralegals and get them comfortable with Madrid filings,” he said. “We’re an Israeli company so we can take advantage of the Madrid Protocol more easily than a US-based company.”

He added: “The Madrid System is not as friendly towards US companies, but if you happen to work for a foreign firm, you can take advantage of the system to save money, which will help with your overall budget plan.” 



more from across site and SHARED ros bottom lb

More from across our site

The UK-India trade deal doesn’t mention legal services, showing India has again failed to agree on a move that could help foreign firms and local practitioners
Eva-Maria Strobel reveals some of the firm’s IP achievements and its approach to client relationships
Lateral hires at Thompson Hine and Pierson Ferdinand said they were inspired by fresh business opportunities and innovative strategies at their new firms
The launch of a new IP insurance product and INTA hiring a former USPTO commissioner were also among the top talking points this week
The firm explains how it secured a $170.6 million verdict against the government in a patent dispute surrounding airport technology, and why the case led to interest from other inventors
Developments of note included the court partially allowing a claim concerning confidentiality clubs and a decision involving technology used in football matches
The firm said adding capability in the French capital completes its coverage of all major patent litigation jurisdictions as it strives for UPC excellence
Marc Fenster explains how keeping the jury focused on the most relevant facts helped secure a $279m win for his client against Samsung
Clients are divided on what externally funded IP firms bring to the table, so those firms must prove why the benefits outweigh the downsides
Rahul Bhartiya, AI coordinator at the EUIPO, discusses the office’s strategy, collaboration with other IP offices, and getting rid of routine tasks
Gift this article