The article was first published on the WTR Global Leaders 2021
What led you to a career in intellectual property and what has been the secret to your success?
After graduating in law in 2000, I attended a postgraduate course in EU economics and law, a small module of which was devoted to Community trademarks. The course offered a traineeship in Alicante and I really liked the idea of being part of a fledgling company (it was 2001 and the Community trademark system was at the beginning of its journey). In the meantime, I was practising law and was looking for an aspect of the law to learn more about. It seemed like the perfect time to move, lock, stock and barrel to Spain and be part of that multicultural and still embryonic world. After a few years in Spain, I decided to return to Italy and tackle other aspects of intellectual property in an innovative and solid firm like Bugnion.
How does your firm remain cutting-edge in its offerings?
One of the reasons that made me choose Bugnion 18 years ago was the young, informal and very innovative environment, the desire to give everyone a chance and to assist clients not with austerity and formalism at all costs – but with different and unconventional solutions. This creative and dynamic approach, together with the size of the firm (today we are almost 250), make Bugnion a unique reality on the Italian and European scene, where we continue to face the various challenges that the current IP scene presents. The independence and freedom of approach that each Bugnion partner enjoys allows us to respond to every kind of client and every type of request and is a resource that continually enables us to innovate our consultancy approach, which is oriented towards problem solving and cost-effective strategic construction.
What are the biggest enforcement challenges currently facing EU rights holders?
I believe that in Europe we will all have to learn a lot in the coming years from the new situation that Brexit imposes on us. The exit of the United Kingdom from the European Union not only presents us with having to sort out our trademark portfolios, but also requires us to rethink our choices of enforcement and protection of trademarks that necessarily take into account UK law (we will have to better know the system of opposition and Customs protection, among others). In addition, covid-19 has increased the use of online resources and online marketplaces for all of us. Those who manage to devise cost-effective online protection systems for brands will have gained a great advantage over their competitors.
How are modern technologies/technological trends affecting trademark portfolio management?
We live in a world where it is easier to carry out an internet search than to pick up the phone and ask someone. This is also true in the IP world; research, brand renewals and, soon, filing are all activities that once constituted the core of every IP firm but that are now available from many online tools or else handled by service providers. We must be able to compete in this scenario, using technological resources to lower costs and fees for our clients and also placing these activities in a strategic context.
Clients will ask us less and less to carry out searches and to renew their trademarks, but they may see these services as a benefit in a relationship based on strategy and the ability to value choices. It is a complete paradigm reversal with respect to the past.
How do you see the EU trademark landscape evolving in the next five years?
From a technical point of view, the implementation of the latest version of the EU Trademarks Directive is excellent news. In particular, the possibility of proceeding with cancellation actions by administrative means should help to make the European trademark registers less crowded. This in turn will foster the possibilities of, for example, making trademark clearances more feasible and focused on guaranteeing the distinctiveness of one’s trademarks with less costly actions. This will make registers clearer even to players used to very different systems and will help to modernise the whole structure, which is necessary in order to enable Europe – often seen as tied to tradition – to meet global challenges.