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IP, Marketing and applying the Art of In-House Thinking to Private Practice Clients

For someone who is incurably curious, a career in intellectual property is an adventure of glimpses into different industries and opportunities to find out how they work. My career has taken me to a paper cup factory (where I was delighted to discover that they transported the cups from A to B by sucking them up a vacuum tube and whizzing them through pipes that traversed the factory ceiling), to a props designer’s studio (where I got to try on an original storm trooper helmet) and on a quest for vintage sunglasses to prove that an opponent’s design (which was being aggressively asserted against my client) was not in fact new.

I was asked to research and write a book on Advertising Law when the Advertising Standards Authority overhauled the CAP and BCAP Codes that regulate marketing communications. This provided a fantastic opportunity to weave in some complementary threads to the tapestry of my career: brand and marketing run alongside the legal framework of trade mark law and gave further depth to my practice.

About ten years ago, I decided to go in-house and that offered a different perspective, affording me the privilege of eavesdropping on journeys of product development from concept to launch. And as a branding and marketing lawyer, I have watched the conscious alteration of a business’ public image through a change in its “tone of voice” – the words it chose when communicating with its customers: a change which pervaded all comms, from marketing to Ts and Cs.

As young lawyers, we are trained to research and understand our chosen areas of expertise and to craft comprehensive pieces of advice, setting out the risks and the options for our client to make decisions. Much like mathematicians, we are encouraged to show our working, to explain how we reached our conclusions.

An in-house lawyer is fully immersed in the business they advise and as such, they tend to play a slightly different role from their colleagues in private practice. You develop a “risk and reputation barometer” for the business such that you may rule out some courses of action without even delivering advice on them – or at least no more than a throwaway “we could do this, but it wouldn’t sit well, would it?”

One of the things I was struck by was that when I needed to instruct external legal advisors was that I would receive detailed advice (showing all the working!) and that I would then spend significant amounts of time editing, abridging and re-shaping that advice depending on whom in the business I needed to brief (as well as filling in background knowledge: marketing people are brilliant at building a brand, but do not generally need concern themselves with prior user rights or the law of passing off). This is intended as no criticism of the lawyers who gave that advice: I had instructed them and they had delivered their advice to me, assuming a certain level of knowledge.

I never expected to find myself once again in private practice, but in Aria Grace Law, I have found a home that sits comfortably with my world view, from the way we organise ourselves as a business, to the clients we act for. My time in-house has changed me as a lawyer by giving me a chance to be both lawyer and client at the same time – and in doing so has changed my understanding of what clients want.

A few months ago (and before I joined Aria Grace Law) I had an interesting conversation with a colleague about a client. The client was planning a substantial re-branding exercise, whilst at the same time streamlining and consolidating functions such as HR and Accounts that could be shared with other companies in the group. The client was a global organisation and my colleague had prepared a table of the steps it needed to go through to change the names of its legal entities in the various jurisdictions, including likely costings and timelines. The client wasn’t enthusiastic. “We don’t see why we need all this,” their people had said.

When I thought about it, I wasn’t convinced either. As lawyers, we were dealing with the client’s brand and marketing team and it occurred to me that we would probably be taking instruction from the Company Secretary if indeed they wanted to make multiple changes to the corporate entities in the group.

“I think I know what’s happening here,” I said to my colleague. “The client wants to have their hair done. Quite radically too - change of colour, the works. Actually, I think they are re-evaluating their image generally; maybe they are also considering gym membership and some life coaching. But what we’ve given them is Deed Poll forms.”

As legal advisers, we are used to dealing with legal questions and answering them with legal solutions - that is what we are trained to do. However, the longer I practice, the less I believe that this is actually what our clients want us to do. Much like a good hairdresser, most clients want their lawyer to offer an opinion – actually to advise – rather than simply to follow instructions. We are valued for our experience and that encompasses the commercial and reputational impact of a course of action.

Intellectual Property and Marketing Law Update by Gemma Cullis – Partner at Aria Grace Law 23.06.2020


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