Peter Schramm

What inspired you to pursue a career in intellectual property, and what advice would you give someone with a similar goal?

The international and interdisciplinary nature of our daily work. Good IP strategy advice and successful litigation always requires the best possible understanding of the client's products, technologies, brands or marketing concepts, and the ability to work in an international team with the client's internal experts and their legal counsel.

I would advise young colleagues considering a career in intellectual property to take an interest in business matters beyond the legal side of things, spend some time abroad working in an international environment and be a team player.

You have litigated internationally on behalf of many well-known brands. In your experience, what are the most crucial steps in preparing for complex and high-stakes cases? 

The key to success is a well-planned cross-border strategy that avoids jeopardising overall victory with hasty national solo efforts and the resulting negative precedents. It is important to know the current case law and the best IP courts and consider any previous decisions on trademarks or product designs to be enforced in all relevant countries. This requires strong teamwork and trustful cooperation, especially with the client's in-house counsel and an international network of top-tier colleagues.

How can firms provide more or better services under budget constraints? 

It certainly helps to establish a long-term cooperative relationship between the lawyer and the company. If the practitioner knows the client's brands and products and relevant case law well, they do not have to start from scratch and learn about the issues involved. This saves time and effort. In IP portfolio management, it is advisable to have an IP strategy on paper that contains the essential principles for the protection and enforcement of the client's most important trademarks, technologies and designs. This will facilitate and standardise decisions in individual cases and coordinate the key processes. Such a paper will help to allocate resources properly and focus on the essentials.

As a leader of MLL Legal’s IP team, what are three key characteristics of an outstanding IP practice?

Professional excellence, effective international collaboration with other top-tier law firms and a strong team spirit. 

While many believe it is up to the rights holders to pursue counterfeiters through the courts, others feel that online platforms should be doing more to address this issue. What is your take on this?

Automated procedures are particularly helpful in keeping online platforms free of counterfeits from often nameless providers and protecting the respective brands from dilution. The online platforms should cooperate better here, especially as AI is constantly improving the technical possibilities for this. 

With 20 years of experience in the IP industry, what has been your greatest professional achievement to date, and why? 

The Swiss Federal Supreme Court’s Lindt Gold Bunny judgment, which was recently won by my team, should certainly be mentioned here. With its immense worldwide press coverage, this judgment has helped to strengthen the protection of 3D trademarks across borders and – hopefully – counteract the dogmatic and unjustified reluctance of the courts. If, for example, consumer surveys prove that a mere product design is perceived as a trademark, it should also enjoy the corresponding trademark protection.

What steps is your firm taking to improve the hiring processes to increase DEI in the workplace? 

Diversity and plurality of thought are firmly engraved in our firm’s culture and create the independence of mind that our clients expect from their trusted advisors. For example, we have several alternative career paths that make it possible to combine work and family in the most effective way. MLL Legal is also a member of Women in Intellectual Property, a non-profit organisation dedicated to promoting the development and commitment of women who are active in the IP field, an industry which is still predominantly male. Our own MLL Legal IP team consists of nine women and nine men, so the inclusiveness of women – and any team member of whatever gender, sexual orientation, ethnicity and religion – is evident within our law firm. 

The proposed shift in the EUIPO’s role when it comes to intellectual property (ie, its growing involvement in SEP issues) is making waves in the IP world. How do you think this might affect the trademark sphere?

I'm relaxed about that. IP rights are usually cumulatively applicable, so good IP lawyers should have knowledge in all areas of intellectual property to advise their clients in the best possible way. The same applies to authorities. I have no objection to an authority at EU level being responsible for trademarks, patents and designs, as this is usually the case with national offices.

Your expertise spans multiple practice areas, such as design, life sciences, compliance and competition law. What advice would you give to trademark professionals who are increasingly having to deal with the convergence of different areas of law? 

In all of these matters, it is best to work with a single law firm that can advise equally well in all areas. As there are many interfaces between these areas of law, coordination in legal advice is key. This also applies to the interface with M&A, where intellectual property is becoming increasingly important.

The Swiss Federal Institute of Intellectual Property has relaxed its practice concerning trademarks containing a geographical indication of origin. Was this a welcome development, and what should GI mark owners bear in mind in light of this? 

This change in practice was long overdue. The requirement to preventively restrict the origin of goods and services in the case of GIs was dogmatic, unjustifiable and very difficult to explain to colleagues and clients from abroad. Effectively, a GI is only misleading if it is actually used for goods or services of a different origin and not solely because it is entered in the register as a trademark for goods or services that may originate from somewhere else. For the owners of GI trademarks, not much has changed. Trademarks that contain GIs in addition to distinctive elements can now be registered without restrictions, as is the case in most other countries.