As part of iurratio’s interview series “Career Specials”, Finnegan partner Janina Wortmann discusses the requirements and perspectives of working as a trademark and design lawyer.
Q: The area of trademark and design is not one of the traditional legal areas that appear in legal training. What made you interested in this area?
A: I first came into contact with "soft IP" shortly after my first state examination as part of a part-time job at a large law firm. Originally, it was just a way to usefully bridge the time until I started my Master's degree in South Africa - but in fact, this part-time job influenced my entire professional life.
My interest in trademark and design law was so great within a very short time that I focused on the area of IP during my master's degree and from then on I didn't really want to do anything else. All of my part-time jobs, freely selectable traineeships and then of course my entry into the profession were in the area of IP. The reason for my enthusiasm is certainly that in IP you always have something "tangible". We don't just work with legal constructs, but also have a very strong product focus. The office of a trademark and design lawyer is actually always full of visual material, be it chocolate bars, strollers, watering cans or items of clothing. I have always liked this product focus.
Q: What ultimately led you to decide to work in the field of trademark and design? At what stage in your career did you decide to work as a lawyer in this area?
A: Anyone who specializes in trademark and design law and wants to work exclusively in this area does not have that many options: In the civil service, it is a gamble whether you will ever end up in one of the (relatively few) chambers or senates that deal with this area of law. Typically, only very large companies are considered as in-house lawyers because only they need specialized "soft IP people". So it is a good thing that I could never imagine working as anything other than a lawyer. I love representing my clients' interests and taking their side. And I like the speed at which things happen in the legal profession - and especially in the area of soft IP.
Q: What do lawyers have to expect on a typical working day in the area of trademark & design?
A: The crazy thing is: the IP area is considered a niche area. The subcategory of trademark and design law is even more specific. You might therefore think that the whole thing would quickly become redundant - but that's not the case. On the one hand, the area is so large that everyday work is so incredibly diverse because you are constantly faced with new constellations and questions and dealing with a whole series of special laws.
A client is planning an advertising campaign and is wondering whether she can compare her products with those of her competitors. One client is wondering how close he can get to a competitor's product design in order to avoid being banned as an imitation. Another has discovered a case of product piracy at a trade fair and wants to have the stand cleared. Still other clients want to prohibit parallel imports of medicines, or they are fighting against grey market trading that dilutes their luxury image. In many of these cases, we not only apply German and European trademark and design law, but also end up in the Unfair Competition Act, the Copyright Act, the Telemedia Act or the Trademarks Act.
But there is something else: In trademark and design law, there are structurally two main areas: "Prosecution", i.e. formal trademark and design law, in which the registration procedures must be supervised and proceedings must be conducted before the trademark offices and special courts, and "Litigation", i.e. conducting disputes before the state courts in cases of infringement. Since our cases are almost always urgent, the majority of the proceedings take place by way of interim legal protection. All of this makes everyday life more than colorful and means that there is no such thing as a typical working day.
Read “Trademark & Design: Interview with Attorney Wortmann”