As part of our 'meet the team' series, we talk to partner, Rebecca Anderson-Smith about how she set her heart on a career as a trade mark attorney from a young age, the latest developments in parallel importing and why trade mark law needs to keep pace with technological developments.
Rebecca’s interest in becoming a trade mark attorney began when, as a teenager, she answered a job advert from an IP firm looking for an administrative assistant over the summer holidays.
“Aged 14 I was already interested in the law and explored becoming a solicitor, going on work experience placements and shadowing a judge on the asylum and immigration tribunal,” says Rebecca. “In the sixth form, I applied to study law at university.”
Meanwhile she began a summer job at an IP firm. “I learnt a great deal about trade marks and enjoyed my time there. I carried on working for them during my gap year and decided I would rather be a trade mark attorney than a solicitor.”
Rebecca switched university courses, opting to study English – a subject she had always loved. She got involved with the university TV station, presenting and video editing. “I really enjoyed the production side,” says Rebecca. “I guess, I might have considered going into TV and film but I had already got my heart set on a career as a trade mark attorney.”
On finishing her degree Rebecca successfully applied to join Mewburn Ellis as a trainee trade mark attorney and qualified in 2015.
“The best part of my job is the relationships I have with my clients,” says Rebecca. “Some I speak to every day and build strong personal and collaborative relationships with. Working with a client at the very early stages of a product’s creation, all the way through until one day you are shopping in Boots and see it on the shelves, is a great feeling. It’s nice to have played a small part in that journey.”
A standout case for Rebecca was one she worked on a couple of years ago for a small airline.
“The dispute was very complex, involving a series of cases and claims of bad faith and passing off,” she explains. “Another company was registering identical marks to those owned by my airline client, for airline related services. They had no intention of using those marks, they were simply trying to disrupt the client’s business.
“Bringing the case involved reviewing hundreds of pieces of evidence and deciding exactly which were the most useful to present to the UK trade mark office. It was complicated work and eventually went to a hearing - we needed to convince them that the third party had registered those marks in bad faith. We were successful, achieving an important victory for the airline.”
Rebecca’s role sees her focus primarily on the pharmaceuticals, consumer healthcare and MedTech sectors. For pharma companies, she explains, parallel importing remains a key issue, even more so post-Brexit.
“After Brexit everyone was waiting to see what the UK position would be,” says Rebecca. “Would the UK maintain the regional EEA (European Economic Area) exhaustion model that saw brand owners unable to control the selling on of goods in the UK once they had been placed on the market in an EEA country? Or would they go for a national exhaustion model, giving owners control of reselling unless the goods had been placed on the market in the UK specifically?
“There was also the possibility that the UK might opt for an international exhaustion model – a situation that would have meant IP rights in goods placed on the market anywhere were considered exhausted in the UK which would have been very bad for pharma brand owners.”
After consultation the UK decided to stick with the regional EEA arrangement but did not rule out changes in the future, a situation which, from Rebecca’s point of view leaves uncertainty for pharmaceutical companies.
At the same time, the EU courts have recently issued several important decisions on parallel imports, giving a certain amount of control back to trade mark owners.
“Parallel importers have been pushing the boundaries, citing consumer resistance to visible evidence of the removal of anti-tamper devices as an excuse to repackage the products,” says Rebecca.
“The Court of Justice of the European Union found that this wasn’t necessary and that simply relabelling the products was sufficient in most cases. While these decisions don’t technically impact on UK law post-Brexit, they do set an important precedent, showing that parallel importers don’t have free rein to repackage.”
Future proofing the law
Looking to the future, Rebecca is keen that trade mark law and practice better reflects the world we live in.
“At the moment trade mark law is just not keeping up with technological developments,” she explains. “We are still grappling with what constitutes the use of a trade mark in a particular jurisdiction when its used online, let alone the changes required to cope with the metaverse and the advent of NFTs (Non-Fungible Tokens). The law needs to evolve and we need to get ahead of the latest developments.”
International associations such as the European Communities Trademark Association which Rebecca is a member of, are at the forefront of this.
“Trade mark law is very territory specific and some are better equipped to manage these advances than others which are falling behind,” she says. “In some jurisdictions the list of goods and services you can include in your trade mark application is fixed, and many types of technology cannot be adequately provided for. As trade mark practitioners we need to join together to solve this problem at an international level rather than solely focusing on our own countries.”
Outside of work, Rebecca spends most of her time with her toddler who loves to be outside. “He likes the outdoors so I spend lots of time with my family in the garden or going for walks. It’s difficult when you have a small child but I still try and get some time to myself and do a weekly yoga class to relax and unwind.”
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