Trademark Practice During Lockdown

Published: July 29, 2020

Joanne Kong Wong Jin Nee & Teo Kuala Lumpur, Malaysia Young Practitioners Committee

With remote working continuing in many parts of the world as a result of the COVID-19 pandemic, INTA’s Young Practitioners Committee held a virtual discussion that focused on how to successfully navigate trademark practice during lockdown. The event, held on June 17 and attended by about 70 participants, was the third in a series of successful virtual discussions on adapting to the digital workplace.

Kevin Wong, director at Ella Cheong LLC (Singapore), and Anita Polott, partner at Morgan Lewis (Washington, D.C., USA) led the discussion, and Alena Fischerova, associate at BomhardIP (Alicante, Spain), served as the moderator.

Alena Fischerova (BomhardIP, Spain), Anita Polott (Morgan Lewis, USA), and Kevin Wong (Ella Cheong LLC, Singapore)

Alena Fischerova (BomhardIP, Spain), Anita Polott (Morgan Lewis, USA), and Kevin Wong (Ella Cheong LLC, Singapore)

The speakers kicked off the event with a quick update on the status of lockdown measures around the world. While the speakers noted that some intellectual property (IP) offices have been less affected by the COVID-19 pandemic or have started resuming regular operations, other offices continue to face interruptions and have adopted policies to address matters such as the extension of deadlines.

In addition to using online resources to track IP policies, Mr. Wong highlighted the importance of trademark practitioners managing regional portfolios to seek support from foreign associates to stay abreast of sudden changes and not miss deadlines.

As a large majority of organizations continue working remotely, Mr. Wong noted the popularity of video conferencing to connect with colleagues, clients, and foreign associates, and even some IP offices and courts. He shared that in Singapore, hearing reviews have been carried out by the IP office via video conference, and the Courts have held call to the bar ceremonies remotely.

Remote communications “cannot be a complete replacement for physical meetings and may not have the same effectiveness,” Mr. Wong suggested, but there is a need to embrace technology and to “get used to new ways of communicating” to avoid breakdowns.

Ms. Polott added that “the key to good communication is actually communicating with individuals” and reminded participants that it helps to “just pick up the phone sometimes.” Noting that some IP offices have been quick to accept electronic documents, she encouraged participants to reconsider the need for physical documents and instead adapt to electronic versions.

Trademark practitioners also continue to face pressure from clients stemming from economic and budget concerns relating to their IP portfolios. Ms. Polott suggested reviewing fee arrangements and spreading out costs. A basic yet fundamental and useful tip she shared to help clients through the budget question is to understand the available resources and figure out “what they can live without, what can wait, and what they don’t need at all.”

At the close of the session, the speakers encouraged participants to use any available downtime for business development such as writing articles and holding webinars, and to also participate in continuing legal education activities

Recognizing, however, that working from home may sometimes become overwhelming and may require adjustments, Ms. Polott suggested continually checking in with co-workers, while Mr. Wong advised developing schedules to retain a healthy balance between work and personal life.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

© 2020 International Trademark Association