Leaders In Law — Q&A with Carrollanne Lindley of Kilburn & Strode

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The Leaders in Law blog is dedicated to discussions with leading lawyers and legal thought leaders on topics including law firm management, legal developments, future of law, leadership in law firms, and the business of the practice of law. 


This week we are talking with Carrollanne Lindley, Partner of Kilburn & Strode, a leading UK intellectual property law firm with offices in London and Munich. Carrollanne qualified as a barrister, then a Trade Mark Attorney, and is now a partner at Kilburn & Strode. Her previous in-house experience, at Rothmans International working on both luxury goods and tobacco products, and later on to 'The Body Shop', means she is well versed in providing plain-English, commercial advice.

Carrollanne is experienced in all aspects of trade mark prosecution and enforcement. Over the years, she has gained expert-status, giving lectures and presentations at various professional seminars, the ABA, the CANADIAN IPA and appearing on television and radio discussing IP issues. She is also noted as a leading woman in business – being listed in Legal Media Group's ‘Leading Women in Business Law' and shortlisted for Euromoney’s Women in Business Law Awards. Carrollanne has also been ranked in the top tier of UK individuals for ‘prosecution and strategy’ in The World Trade Mark Review's WTR 1000 for the last five years.

1. Carrollanne, tell us about your work at Kilburn & Strode and what makes the firm different from other intellectual property firms?

Kilburn & Strode concentrates upon trade mark, design and patent prosecution.  We have clients from all around the world.  We work on the European portfolio of EU and UK companies and also for big US multinationals such as Universal Studios and Boeing. What I really love about my firm is our approach to giving advice. In every instance we ensure that the advice is crystal clear, with as few ‘ifs, buts and maybes’ as possible. In addition to our experience, what I think we are really valued for is calling the odds on what will be won, and what won’t. This gives us an edge, as finding somebody willing to give an unvarnished opinion in Europe is not always easy.

2. What are your thoughts on Brexit and how it is affecting intellectual property law?

Brexit seems to be both a mixture of opportunity and uncertainty. The UK government are not putting IP at the top of their agenda in determining what the outcome of the discussions will be! For patent law, it is likely that very little will change. In terms of trade marks and designs, the EU will no longer include the UK as one of its members. Therefore a decision has to be made by the governmental bodies as to what will happen with regard to European trade mark registrations and European design registrations.  My firm, being a European firm, expects still to work within all areas but for trade mark owners, there will be a series of decisions to be made.

3. From your in-house experience at large brands such as The Body Shop and Rothmans, what advice would you give to in-house counsel who are looking to expand their European/UK portfolio?

My experience in-house for large brand owners such as The Body Shop and Rothmans means I tend to see matters from the point of view of someone who is advising the marketing department or dealing with the finance director of a large company. When you’re looking to expand your European or UK portfolio, my advice is start at clearance, as first a decision has to be made from some facts about the state of the register for your mark.  Because the EU operates with not merely one single registration that will govern the ownership of rights in a territory, but also separate national registrations, a search process can be cumbersome and expensive. Simply to cover the EU there are some 26 Register searches to be run (the EU covers 28 countries but the Benelux - i.e. Belgium/Luxembourg/Netherlands - operates as a single entity). This could lead to a bill of about US$45,000!  Therefore, it seems a very good idea to consider the commercial value offered from clearance in different countries – making a determination as to the territories in which there is likely to be the greatest degree of profit made from the brand's introduction. The more commercial the territory, the higher the chances are of objection being raised against use, or of an opposition. Taking a strategic point of view, the most sensible thing is to first check for identical marks and then choose the major territories for full searches.

For any European IP portfolio, strategic decisions concerning Brexit will also need to be made, including whether to file just for a EU registration and deal with the issues as are raised by the UK leaving the EU, or to cut off that decision early, at the pass.  For major marks, it seems sensible at this point to file both UK and EU applications. The reason for this is, even if there is a decision that EU registrations will become UK registrations, there will be some 1.5 million EU registrations jockeying for position. For minor brands, it might be more sensible just to leave matters to be determined as the Re-registration decisions are made.

Where registrations are in use in just one country of the EU, if that country is the UK, then such use will no longer validate the EU registration at some period.  Consideration should be given to starting use in another mainland EU country. Counsel should consider contractual agreements which currently exist, many of which refer to the EU. They should work out whether an addition to the agreement or a new agreement will be needed if the agreement is intended also to cover the UK.

4. How are you and your trade marks team preparing for Brexit?

Kilburn & Strode will be working at the forefront, advising their clients about the decisions they have to make in respect of each individual portfolio. We believe in a bespoke service – one size does not fit all.  Clear, concise, no-nonsense advice will be needed and that is what we always look to provide.

I and my trade marks team have prepared for Brexit by taking the Irish trade mark attorney qualification in 2016 and as such, four members of our team are qualified to practice in Ireland, an EU member state. We stay on top of all the information that is released but also seek to cut through a lot of information released that is purely guesswork. Facts are somewhat in the minority position at present! We have seen a plethora of speculative information coming out from other firms. We don't think this is helpful.  We believe it is very important that clear advice is given only as soon as there is clear information.

5. What do you think is your “one thing” that most drives your professional success?

I have been asked what is the one thing that most drives my professional success, and I would say my mother.  She was in-house at Mars and highly ambitious that I also should carve out a career in an area of eternal interest and progression.  I have been so fortunate to be a partner at Kilburn & Strode, where every day there is something new of interest and wonderful people to work with. I am blessed in having the best possible clients – I have been so fortunate to have been given so many great people with whom to work.

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About the Firm:

Klemchuk LLP is a litigation, intellectual property, transactional, and international business law firm dedicated to protecting innovation. The firm provides tailored legal solutions to industries including software, technology, retail, real estate, consumer goods, ecommerce, telecommunications, restaurant, energy, media, and professional services. The firm focuses on serving mid-market companies seeking long-term, value-added relationships with a law firm. Learn more about experiencing law practiced differently and our local counsel practice.

The firm publishes Intellectual Property Trends (latest developments in IP law), Conversations with Innovators (interviews with thought leaders), Leaders in Law (insights from law leaders), Culture Counts (thoughts on law firm culture and business), and Legal Insights (in-depth analysis of IP, litigation, and transactional law).