In-house counsel have said they plan to re-assess their trademark filing strategies in the aftermath of the COVID-19 pandemic, while others are re-evaluating which patent applications to pursue in light of potential vaccine developments.
This week came the welcome news that a vaccine developed by BioNTech and to be distributed by Pfizer is around 90% effective – the most hopeful sign yet that life may one day return to ‘normal’.
Nevertheless, in-house lawyers in the cosmetics, software, banking and drinks industries say that, even in the unlikely event that the pandemic passes in the coming months, there will be lasting changes to their intellectual property strategies.
Some are business-wide changes, such as an increase in digital working, while others are more IP-specific, including whether to pursue IP protection for COVID-19-related developments and to save costs by re-assessing trademark filing activity.
To file or not to file?
One in-house lawyer at a European cosmetics company tells Managing IP that internal debates are arising over whether formal trademark registration is in fact the best route – particularly if products need to enter the market quickly.
“Now, companies may prefer not to file based on the costs and length of time to obtain a registration versus the life cycle of the products,” they say.
Applied-for trademarks are publicly accessible on a register so there is an increased risk of competitors trying to oppose the application, they add.
Instead, unregistered trademarks – sometimes referred to as common-law trademarks – may be an option. They are legally different from registered marks, allowing an owner of a product to add the letters ‘TM’ to the name, though this does not have any legal standing.
Pursuing the unregistered route would allow products with a short shelf life, such as pandemic-specific solutions or limited-edition goods, to be rolled out quickly, the in-house lawyer adds.
Marlou van de Braak, legal director of global IP and global commerce at Netherlands-based The Heineken Company – the maker of Heineken beer and others – says the pandemic has not made a big difference in trademark filing strategies at her organisation.
However, she says she has heard of other companies waiting a bit longer before filing applications to temporarily save on filing costs.
“We were already only filing the most relevant trademarks, so [there has been] no big change for us,” she adds.
On the fast track
Charles Louvrier, a senior in-house lawyer at French skincare company L'Occitane in Switzerland, adopts a term coined by investor Warren Buffett to explain where he sees things going. In a world of “VUCA” (volatility, uncertainty, complexity and ambiguity), he says, trademark filing strategies will have to shift to take account of uncertainty – with counsel either opting for unregistered marks or pursuing fast-track applications.
Some limited-edition items may last only six months on shelves – particularly if they are solution specific – so there is always a question of whether to file a trademark application, he adds. However, enforcement would be more difficult, he notes.
While some strategies may include not filing at all, a more likely solution is to opt for fast-track trademark filings, he says.
A fast-track application, which is available at the EUIPO and at various national offices, can be registered in a matter of weeks as opposed to months, and allows parties to be clearer about whether they can safely use the trademark and sell the products or services, he says.
“It would then be easier to decide whether you wish to extend it or not, especially as claiming the priority right would still be available,” he adds.
Fast-tracked rights do come with caveats, however. At the EUIPO, applicants must choose from a pre-determined list of goods and services rather than picking and choosing their own.
Some in-house teams that are debating product shelf life versus the time taken to secure formal registration (which can be four to six months) are even considering whether or not to pursue patent protection, sources suggest.
Cassandra Derham, head of technical IP at travel software company Amadeus in France, says these discussions form part of the company’s COVID-19-recovery plan.
“Do we bother patenting solutions that are really pandemic-specific?” she asks, adding that they may become very widely implemented in different contexts in the future or could be mere “flash-in-the-pan” solutions.
She points to the proposed example of logging a “health passport” on a person’s boarding pass – a concept the company is considering.
This would allow passengers to demonstrate their COVID-19 (and other health) status within their digital boarding passes, in a move designed to help airlines roll out ‘COVID-safe’ air travel and kick-start the tourism industry.
Digital preparations
Arguably the most significant and long-term change that the pandemic will cause will be the increase in digital tools and remote working, sources say.
However, this poses challenges, not only from a working-environment perspective but also in view of practical difficulties such as providing valid signatures for signing documents.
Van de Braak at Heineken says the company has accelerated IP digitisation, including by making improvements to image recognition, and is doing more online searching and automated watching.
Mark Cruickshank, managing legal counsel for IP at bank RBS in Edinburgh, says as the business looks to the future the focus has been on maintaining a strong team culture.
“We are increasingly using collaborative tools like Mural (an online white board) for design thinking and problem solving, to replicate the in-person experience.”
He adds that as restrictions start to ease, a lot of firms will have to confront the challenges of a blended model of working from home and in the office.
“Technology can assist with that, but the behaviours of the team are critical too, so we are focussing on creating a psychologically safe environment where people can be brave with their work and decisions in times of uncertainty.”
On the dotted line
One area that has yet to catch up, but may do as post-COVID-19 measures become clearer, is the ability for contracts to be approved with e-signatures, which can reduce the need for travel.
To allow a local lawyer to represent a company in IP matters, some countries, including China and Malaysia, need signed confirmation. These need to be notarised by a public official (who certifies the authenticity of signatures) and legalised by a government agency such as a consulate.
Some IP offices, such as the EPO, permit scanned documents or a photograph of a signed form despite still requiring ‘wet’ signatures.
“I think over time more IP offices will allow e-signatures,” van de Braak predicts.
If she’s right, it could be just another example of how IP strategies may have changed for good.
