World Trademark Review - Edital

Feature: Winning service
Figure 1. To what extent is local knowledge and expertise, including
foreign language proficiency, important in searching and watching?
36
Very important 55.6%
Important 36.1%
No opinion 6.3%
Unimportant 1.7%
Not at all important 0.3%
Figure 2. What is the most likely scenario for how you see the trademark service provider marketplace evolving?
continue to evolve. Inclusion of an expanding domain name space and
content from websites and other contextual sources will augment
traditional trademark registry data, allowing for a full contextual
assessment of brands. Third is collaboration. It is critical to provide
secure and useable environments to support collaboration between
parties that will enable the workflow of tomorrow. In-house counsel,
outside counsel, local agents and even business partners need reliable
and quick access to shared content. Finally, while we have deep
understanding of common trends within the trademark ind ustry,
many trademark professionals require a degree of personalisa tion and
customisation.”
This move towards personalised delivery of robust information
presents a distinct challenge to service providers – how to offer a tailored
product and increased system flexibility while keeping costs down.
Forecasting the future
These predictions naturally lead to a consideration of the industry’s
future as a whole. The final question in the survey centred on how the
marketplace is likely to evolve (see chart above). While responses were
mixed, the main focus concerned proactive partnerships between law
firms and service providers, with respondents stating either that
vendors and law firms will need to w ork increasingly closely (23%)
or that the two currently work well together and will continue to
Vendors and law firms will need to work ever more closely 23%
Vendors and firms work well together today and will continue to do so 22.6%
The growth in the number of in-house trademark practices will make firms and 18.9%
vendors more competitive with one another
Vendors will increasingly encroach on services offered by law firms 18%
The vendor marketplace has reached the limit of what it can offer without 9.3%
providing legal services
Vendors and firms will offer more and more distinct services and competition 6.3%
between them will diminish
Other 1.9%
do so (22.6%).
This sentiment is echoed by Corsearch’s Stolfi: “We feel that
collaboration between legal professionals and their service providers
will become even more critical, as everyone becomes tasked with
providing more and more value.”
The law firm/service provider relationship clearly remains critical,
and the challenge is for providers to meet demand for more
sophisticated data and advice without impinging on the services that
law firms (also clients) offer.
In this regard, there will be pressure not to offer too m uch in the
way of trademark-specific advice from some quarters (tellingly, almost
one-fifth of survey respondents felt that the growth in the number of
in-house trademark practices will intensify competition between
firms and vendors).
This tension was highlighted by several private practitioners. One
stated: “What is needed from service providers is informa tion on
which to base advice – anything further would encroach on my
business.”
Interestingly, some in-house commentators agreed: “Law firms
should be the ones handling activities beyond what the providers do
now. Otherwise, the lawyer-client relationship is not there, and clients
like us do not get the same confidence, sa tisfaction and value of work.”
But while service providers may risk treading on law firms’ toes as
World Trademark Review December/January 2012 www.WorldTrademarkReview.com