Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

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 ros bottom lb

More from across our site

Online storytelling platform Humans of Bombay isn’t wrong for trying to protect its copyright, but it could have handled its dispute better
We have started accepting submissions from in-house counsel and teams for the 19th annual Managing IP Awards programme
Patient groups and generics makers may have to bear the brunt of India’s latest attempt at patent reform
Each week Managing IP speaks to a different IP lawyer about their life and career
Paolo Tavolato, who will share the role, said private equity support would help the IP consultancy achieve its ambitious M&A plans
Cyril Amarchand Mangaldas has hired former Anand & Anand partner Swati Sharma and hopes to compete with specialist IP firms
Rapporteur-Judge András Kupecz ruled that education and training weren’t legitimate reasons for a member of the public to access documents
Searches for comparison prior art will be a little easier, but practitioners will have to put more thought into claim construction and design patent titles
The Helsinki local division rejected AIM Sport’s request for a preliminary injunction in a dispute with rival Supponor
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP