Carla MacLachlan, one of our Trade Mark Attorneys, tells us how she joined the profession and comments on the importance of trade marks.
“When I left college in 1991 with a marketing diploma, Ireland was deep in a depression with the conflict in Northern Ireland still raging and jobs very scarce. Many of my school friends had gone to the United Kingdom to work but I was lucky (or so I was told at the time!) to have a parent who could offer me employment.
I started in MacLachlan & Donaldson in July 1991 and immediately loved the buzz of office life and working in a Georgian Building in Merrion Square in the centre of Dublin. The office was so busy and to me as a young person everyone had an air of importance and a role to play in a business which was expanding despite the gloom and doom elsewhere.
Towards the end of 1991, the Patents Office announced that the Trade Mark Examination would be held the following summer. Since this exam was only set every few years, I decided that although I was only in the office a “wet weekend” I would “give it a go “. I was both nervous and pleased at the prospect of the exam.
In preparation for the exam, “grinds” began at home as myself and my brother (who was also sitting the exam) got private tuition from “the boss” and we soon learned all about the wonders of the Trade Mark World. Some of the leading cases at the time were C & A Modes vs C & A Waterford, IT World Directories vs The Controller, Adidas Sportschue vs Charles O’Neill, Gallaher (Dublin) vs The Health Education Bureau and of course HOLLY HOBBIE decision (so called trafficking in trade marks).
Eventually the exam came and went and in those days the time span between the sitting of the exam and the results was not defined and those of us who had sat the exam had nearly forgotten about it all together when the Patents Office suddenly announced that the papers had been corrected and the results were in the post. Much to everyone else’s surprise I passed. When I phoned my father with the good news, he advised me to double check that it was my name on the results and not my brother’s! I think he was joking (I hope). And so my career as a Trade Mark Agent (Attorney) began.
The biggest challenge that we as Trade Mark Attorneys faced at that time in 1992, and in many ways still face today, is educating business and brand owners on the importance of protecting their brands/trade marks. Although a large number of firms have had the foresight to protect their trade marks, there are many companies who have not. It is often only when these companies with unregistered trade marks run into trouble that they contact us. By this stage it can be too late. For example companies can spent vast amounts of money creating a very attractive trade mark and getting the design work carried out but then do not apply for registration. In this scenario a competitor could adopt that mark and run with it causing great upset to the original creator and owner of the mark.
I have always tried to get the message across to as many business and brand owners as possible that trade marks are valuable business assets and should be protected by registration.
If you wish to contact me to discuss your ideas, please feel free to call me 01-6763465, email me firstname.lastname@example.org or fill in the Contact Us form.”
Cliff Kennedy, one of our directors, takes a light-hearted look on his 36 years in the profession.
On March 14 1978, I entered the hallowed portals of No. 47 Merrion Square for the first time. What the career I was about to embark upon, I had no idea. A few months previously, I was fresh out of College with a law degree, with barely a mention of IP on the syllabus during the 4 years, and had also recently qualified as a barrister at law. With no members of the family previously having being involved in the legal business, I knew work in the form of referrals would be scarce should I decide to practice. Norman MacLachlan’s brother, Walter, was a neighbour and he mentioned to me that Norman was looking for someone with a legal qualification to work in his firm of patent and trade mark attorneys (whatever they were) so I applied for the job, was interviewed, sat waiting for a month for a reply, was thinking of going for an interview in one of the rival firms, when the phone rang and Norman was on the other end of the line: “Would you like to start on Wednesday for £50 Irish pounds (as it was then) a week”. Happy days.
Thirty six years later I am still not sure what sort of career I have embarked upon because the first 18 have been quite different from the last 18. When I joined, there were about 12 people (we eventually grew to 40+) in the company and only four specialist IP firms (there are now 13) and all we had to worry about was the Irish Trade Marks Act, 1963, which was almost identical to the United Kingdom’s legislation. Any foreign issue in Europe was looked after by our network of international associates in the relevant country. There were no Community trade marks, International trade marks, service marks or multi-class applications. We even had a legal provision concerning “association” (i.e. any applications/registrations which were associated could not separately be assigned). I remember one batch of over fifty applications in respect of trade marks containing the word SPERRY which had a multitude of cross-associations imposed by the Patents Office and which I had to work out and report to the client. I sat on the Official letters for a number of weeks until one day my colleague noticed that the motto for that day on the calendar was “Nothing is impossible to the willing heart” which she cut out and attached to the top file. I reported the cases the next day.
The first trade mark I registered was DETTOL so this famous brand has a special place in my heart or should that be in my kitchen? The registration still exists: https://eregister.patentsoffice.ie/register/TMRegister.aspx?idappli=122674
The work was plentiful as there was, as mentioned, only a small number of Irish firms and to protect a trade mark in Ireland, the application had to be filed directly in Ireland and through one of the four firms. It was verging on a monopoly situation. This influx of work had implications for the Irish Patents Office which had developed a huge and embarrassing backlog in examining applications which had reached almost 6 years! It had got to the stage on occasions that an application was due for its first renewal before it had even been published. In 1981, Maurice Kennedy (no relation) joined the Patents Office with a brief to tackle the logjam. This he and his colleagues achieved with great success and by the end of 1984 the backlog was a thing of the past. One of his team, however, took exception to the new work practices, threatened to and then went on sick leave never to be seen at his desk again! Job done, Maurice then headed off to Brussels to deal with more weighty issues but he has remained a friend ever since despite the fact that as a result of his efforts we had to do 6 years of work in the space of a couple of years but it was a nice complaint to have. The Irish Patents Office has remained ever since one of the most efficient offices of its kind throughout Europe.
The telex machine was at the cutting edge of fast communications, although one UK firm continued to send us instructions by telegram, but with the arrival of the fax machine in the mid-1980s, the telex was quickly consigned to the waste bin of history and it is interesting that despite e-mail, the fax has still stood the test of time but I am not sure for how much longer. Records were kept on index cards and trade mark searching was also done manually on cards. I spent many hours in the Patents Office library carrying out such searches. I particularly hated Class 05 (pharmaceutical) searches where the pending search books alone ran to twelve tomes. Office essentials during that time which have pretty much now disappeared included carbon paper, typewriters, correcting fluid (Tipp-ex®), postage stamps, telex machines (as mentioned), address books, encyclopaedias, dictionaries and reference books, rubber thimbles for searching, paper copies of any legislation and glue for sticking representations of trade marks on to application forms: we thought the Pritt Stick® a work of genius (perhaps it was). I am beginning to feel very old.
The trade mark world changed forever in 1996 not only in Ireland but across Europe when the European trade mark came in to force. The international trade mark followed soon thereafter. Ireland became a small IP outpost on the edge of Europe and to protect a trade mark here, it was no longer necessary to go through the Irish Patents Office or to employ an Irish Attorney but one could file for a CTM in Alicante or designate Ireland through an international registration. The number of applications directly filed in Ireland immediately dropped from around 5,000 to just over 2,000. Our clients/associates had primarily been UK based and many were luckily still interested in filing not only in their own country but also in neighbouring Ireland but we had to concentrate more on the local market and it has remained that way ever since.
IP work is far more complicated, challenging and also interesting than when I first joined the profession. For instance, I recently encountered an Official objection to a European Union application even though we had previously registered the almost identical mark for the same client without any problem. The difference was that the word had a descriptive meaning in Romanian, which country hadn’t been a member of the EU when the first application had been examined. Knowledge far beyond the arcane provisions of the Trade Marks Act, 1963, is required but in retrospect the basic job of a trade mark attorney still remains the same as when I first started out and in this regard I am reminded of the verse of Rudyard Kipling (as amended):
I KEEP six honest attorneys
(They taught me all I knew);
Their names are What and Why and When
And How and Where and Who.”
“When I tell people I work in the field of intellectual property, and specialise in patents, I have become accustomed to a response which includes a pause and a blank stare, which is then followed by a “Pardon, sorry, a what?”. Further explanation (and I do my best to keep it under 30 seconds) tends not to help the situation, and usually just results in a glazed over look, which is then quickly followed by “Do you play rugby?”, or more recently “That kiwi Warren Gatland shouldn’t have dropped poor old BOD like that!” (for those who don’t follow rugby, BOD is Brian O’Driscoll, out-side centre for the British and Irish Lions, and all round Irish rugby hero).
Now I could blame this all too frequent occurrence on my New Zealand accent, which is still very much a part of me despite having lived in Dublin for many years. However, having worked in the IP field for more 10 years, it is quite clear to me, very few people know about the patent and trade mark profession, and if they have heard of us, what it is we actually do.
It is to this end that I write: A working day in the life of a patent attorney.
Today I begin earning my keep by completing a new patent application for a local client who has developed a product in the audio engineering field. The product is ready to go to market and since the patent application must be filed before there is any public disclosure of the product I file the patent application at the European Patent Office. I then let my client know that they now have pending patent for their new product and provide them with the details of the European patent application, including the patent application number.
I then receive a call to let me know that my 11.30am appointment has arrived, who following a brief chat yesterday afternoon on the telephone, I understand to be a prospective client who has made a mechanical device. When I go to reception I see she has brought in a prototype of her invention wrapped in a bed sheet so that no one can see it. She has obviously taken my advice to keep her idea confidential very seriously, which is a good start! At the meeting we discuss her device, the advantages the device has over other similar devices, and how those advantages are achieved. I suggest that before a patent application is filed a patent novelty search be carried out in the first instance to assist in determining whether the device may be patentable. On the assumption that patentable subject matter is identified by the search, an initial patent application may be prepared and I give her options which are available for this. I expect she will get back to me in a few days with instructions to carry out a patent novelty search when she has a chance to mull over our discussions.
Lunch today is spent with colleagues, with whom I have worked for many years. We are very fortunate to be located in the centre of the city in an area known locally as Georgian Dublin, and we are spoilt for choice with a fine selection of cafés and restaurants nearby.
After lunch I make a start reviewing instructions received from a firm of patent attorneys in the United States with whom we are working to secure a European patent for a large US corporation. The European patent application concerned is being objected to by a patent examiner at the European Patent Office and I will need to prepare arguments and amend the application to overcome the objections so that the application may progress to a granted patent. The main issue with this case is that the examiner has located a document that was published before the patent application was filed and which describes a product similar to our clients product. My job in this case is to point out for the examiner the differences our clients product has over the similar product and argue that those differences provide significant advantages. A large part of the job involves working with patent attorneys from other countries as we assist each other through the processes involved in securing valuable international patent portfolios for our clients.
The day ends with a meeting with colleagues to discuss strategy in relation to a hearing we will be attending at the European Patent Office in Munich next month. Our client is a local inventor who secured the grant of a European patent for a product that has enjoyed such commercial success that it has not gone unnoticed by competitors. As a result, a competitor has filed an opposition to the patent at the European Patent Office to try and revoke the patent, and we must now be ready to defend our client’s lucrative patent rights. As I drafted the patent application and I know this client has invested significantly in the product it weighs heavily that this opposition must be disposed of so that our client, whose business employs many people, may continue to use the patent to keep competitors out of the market place and thereby extract a premium price for their product throughout Europe.
Being a patent attorney gives me the opportunity to work with smart people and cutting edge technologies. I get a chance to create valuable intellectual property for my clients and assist them as they use and defend their patent rights to create successful businesses.”
“One of the privileges of being a patent attorney is that I meet so many inventors with great creative minds and ideas. Hearing about new innovations is always exciting. But sometimes I envy the attorneys who first heard about terrific inventions which have become parts of our daily lives, such as the attorney whose client came to him with one of my favorite inventions, the “hook and loop” fastening material. You may wonder what I mean, until I mention the trade mark “Velcro”. What a great material. It has become a ubiquitous part of our everyday lives, so it is easy to take it for granted now. But this material was invented in the 1940s by Swiss engineer Georges de Mestral and patented in 1955. He was thinking about making a fastener that would mimic burrs, those annoying sticky seeds that attach themselves to your clothing. He came up with the idea of forming loops on one strip and hooks on another. When the two strips are placed together the hooks snap into the loops. Ingenious!
George capitalised on his invention by thinking up a clever trade mark for it. Some of the most well recognised trade marks are made-up words such as Velcro which allude to the goods without actually describing them. Velcro is a word which is compounded from Vel(vet) and Cro(chet hook). The patent has expired, but the trade mark lives on.