In Your Shoes - Mike VetteseAll members Prev: Madeleine Gillan Next: Eleanor Whitby
Mike Vettese is a Director of Trade Marks at Murgitroyd, a firm of patent and trade mark attorneys, based in their Aberdeen office. Mike lives in the Dundee and Angus area, and is keen to give fellow DACC members an insight into the day-to-day dealings he has as a trade mark attorney, a profession where the legal and brands meet.
START OF BUSY WEEKMonday 11 March 2019
Once in the Murgitroyd office (pictured), I begin by reviewing emails received over the weekend and prioritising work. The role of a trade mark attorney is largely governed by deadlines. Much of today was focussed around the watching services that I provide for a number of very high profile media and entertainment clients.
When your trade mark is registered it is important to police and enforce, and a watching service, where we watch for the publication of the same or similar marks for the same and similar goods and services, is a vital component in our armoury. Some of my time was spent on conducting UK trade mark clearance searches. These are at the end of the scale where we check to see if a client’s proposed new trade mark is clear for use and attempted registration for the goods and services of interest.
NEW ENQURIESTuesday 12 March 2019
Of interest today was the fact that I dealt with a number of new enquires. This is an important part of the role at Murgitroyd, and requires quick responses. Today’s enquiries focussed around existing businesses looking to protect their important brands.
Also of interest today was the preparation of quarterly trade mark schedules for high profile media and entertainment clients. Whist these schedules are time consuming to prepare, they are key to the client’s trade mark strategy as they can see which of their marks are protected, where and for what goods and services, and also the current status of the mark (i.e. still pending or registered). The schedules also include a summary and description of ongoing infringement, counterfeit and opposition matters.
DEADLINESWednesday 13 March 2019
A great deal of my time today was spent reviewing and signing off deadlines, given that I will be out of the office all day tomorrow. I also had a meeting with one of the new enquiries that contacted me yesterday so that we could discuss their requirements face-to-face.
I also dealt with a number of day to day tasks including the preparation and filing of a new EU trade mark application which covers all (current) 28 member states of the EU through a single application.
With Brexit fast-approaching, the UK leaving the EU is a hot topic for all business and, given that there is huge uncertainty regarding the implications in terms of trade mark law and practice, Murgitroyd’s advice remains to file separate UK and EU applications. This avoids any unnecessary worry about the impact that Brexit may have on our client’s trade mark rights.
ESCAPE TO THE COUNTRYThursday 14 March 2019
Today I travelled some 78 miles to meet with a new client. On the way, I passed this road sign and very nearly had an accident in my car as I was laughing that much. It would have been the highlight of the day but the venue at which our meeting took place was spectacular, even with the typical Scottish weather.
The meeting was incredibly useful in order for me to explain the trade mark process from searching through to filing, and policing and enforcement once the mark to registered. We also discussed at length the range of goods and services to be provided. I pointed out that trade mark registrations last for 10 years initially and are renewable indefinitely for further ten-year periods. Therefore, some thought should be given to possible brand expansion in the future.
CHINA FOCUSFriday 15 March 2019
Today was another of reviewing and dealing with deadlines and new enquires. However, today also highlighted the variety and international nature of my work.
I had to deal with opposition matters in China, requiring us to collate and file evidence demonstrating the client’s use of their mark in China for the relevant goods and services over an extended period of time. China is a “first to file” country meaning that the first person to file an application for a mark in China gets the rights. Whilst there are limited prior user rights, these can be difficult to prove and require a great deal of evidence to demonstrate.