Wednesday 9 December 2009

Retainers and Trade Mark Practice: How Are the Changes Being Felt?

An apology to readers of the blog--I have been on the road with virtually no access to the staples of modern online communication. That said, I take this brief opportunity to raise an issue that has troubled me for some time, namely, the role of trade mark counsel in a retainer relationship with a client.
Hardly a day seems to pass lately without some item crossing my screen on the death of the billable hour and the concurrent rise of the retainer and other like arrangements. This development has not spared my trade mark practice. More and more, I am being asked to provide trade mark services to office clients under the framework of the general retainer in place between us. I am still wrestling with myself on the best way to provide trade mark services in this situation.

There are several aspects of this arrangement that give me particular pause. First and foremost, there is the question of lines of communication and authority between the client and the office being retained. Trade marks are a speciality practice area; frequently, the client will not have anyone within it with the appropriate background to interface with our trade mark group in an efficient manner.

As I have written previously, in many companies, responsibility for trade marks will be lodged with the CFO or like person, where trade marks are viewed primarily as a cost item. Whether that is a good or bad way to view trade marks is a question for another blog post. What cannot be gainsaid is that, when a retainer is involved, the cost consideration tends to become distorted, because the immediate cost of the trade mark services is zero.

Assuming that the retainer amount remains the same, the effect is that the trade mark services have no additional discernible cost, at least from the point of view of direct corporate expense. The result may be that trade mark counsel might search in vain for an appropriate person from whom to take instructions and for whom to provide the appropriate services.

A second issue is the matter of engaging foreign associates. Here, the issue of costs re-enters the trade mark equation, but from from the back door. By this I mean that the retainer arrangement tends to assume that the retaining company can achieve greater certainty, litigation aside, about the amount and timing of payment for legal services. Given this, the retaining company will be reluctant to expend additional sums for services that are presumably covered by the retainer.

The need to rely on foreign trade mark associates disrupts this expectation. I have to explain, time after time, why, given the retainer, these additional services are required from the various foreign associates. I am also expected to obtain reasonable legal fee commitments from these foreign associates. Here, as well, the time required to coordinate these various third-party law firms can lead to misunderstandings and even tension.

The upshot of the foregoing is a lingering sense that the nature of my trade mark practice will likely change in response to a presumed increase in the number and frequency of retainer arrangements. The exact contours of this changing relationship is still a work-in-progress, but I can already foresee disruptions between our clients and us about the way trade marks should be handled against a retainer backdrop.

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