Join us in celebrating the work of trailblazing women around the world and in raising awareness about why it is so important to encourage more women to participate in the IP system, to protect their valuable IP and commercialise their ideas.
To celebrate our own “Women in IP” we’re taking this opportunity to introduce Elaine Deyes – Head of Dehns Trade Mark Group.
Elaine works with a variety of clients, ranging from individuals to major companies with significant international trade mark portfolios. Her clients operate in many different sectors, including fashion, lighting, renewable energy, pharmaceuticals, entertainment, estate agency, finance and insurance, healthcare and fitness, construction and chemistry.
Tell us a bit about your role?
I am a Chartered Trade Mark Attorney and Head of Dehns’ Trade Mark Department. I also play an active role in the firm’s management and various committees, and am the partner in charge of Graduate Recruitment.
What is a typical working day for you?
No two working days are the same. I would generally start the day by going through my upcoming deadlines with my paralegal/assistants, and the rest of the day would normally be spent on a variety of tasks, such as reviewing search reports, preparing advice to clients, overseeing the preparation and filing of new trade mark applications, transactional work (such as assignments and licences), preparing written arguments or evidence, drafting settlement proposals/agreements, preparing for hearings, liaising with/instructing overseas attorneys, client calls/meetings, internal meetings and discussing cases with my assistants, as well as more administrative tasks, such as billing.
What are the most challenging aspects of your job?
One of the hardest aspects of my job is having to break the news to a client that they might not be able to use or register a mark they have selected, as it is often the case that by the time they come to us for help, they have already ploughed a significant amount of time and effort into their brand, and become rather attached to it. Whilst I will always do my best to find a way around potential obstacles, so that the client can do what they set out to do (and there are plenty of things we can try!), it is inevitable that, on occasion, a client will have to adopt an alternative mark, or at least alter their strategy. Another particularly challenging aspect of my job can be negotiating settlements/agreements with third parties on behalf of my clients. Often, what starts off as an apparently easily-resolved situation, can snowball fairly quickly into a somewhat more complex situation, involving a series of interconnected matters/actions, often across multiple jurisdictions, and that’s when things can start to get a bit messy!
When did you enter the IP profession and how?
I first studied IP when studying for my Law and French degree at the University of Surrey. Around the same time, a friend of mine began working as a trainee patent attorney, and it was from him that I learned about the specialist role of a trade mark attorney. During my final year of University, having found out more about the profession, I applied to a number of specialist trade mark and patent attorney firms for a position as a trainee trade mark attorney. I accepted a position at Dehns, and began working here in 1996.
What are the most important skills needed for your role?
Attention to detail, an ability to think outside of the box and pragmatism are all key to being a successful trade mark attorney. Being approachable and making yourself available are also vital to building and maintaining strong client relationships, as are ensuring that you really understand your client’s business, commercial interests and goals.
Do you prefer to collaborate on challenges or do your best ideas come from deep thinking?
Different situations require different approaches, and sometimes shutting yourself away for a few hours is the only way to get your head around a particularly complex matter, but having a team of great people around me, including not only other trade mark attorneys, but also colleagues in our patent and litigation departments, also means that I am able to bounce ideas off my colleagues and benefit from their specific experience or expertise when required.
Why are trade marks important when building a strong brand?
Trade Marks are vital to building a strong, distinctive brand. Securing a registered trade mark protects the brand and provides the owner with the means of preventing third parties from using identical or similar marks or signs in situations where confusion could arise or the third party could, by using a similar mark/sign, obtain an unfair advantage or cause detriment to the brand owner’s reputation. By proactively protecting, policing and enforcing their trade marks, and ensuring that others cannot use or register confusingly similar marks, trade mark owners can avoid the dilution or tarnishing of their brand(s), and reduce the risk of others benefitting unfairly from the time and money they have invested in their brand.
What key principles do you follow in order to deliver the best possible outcome(s) for a client?
I make it my business to understand my clients’ business, goals and commercial priorities. This enables me to devise and employ appropriate strategies, taking into account the client’s specific needs and resources, whilst keeping a very close eye on what it is the client is ultimately looking to achieve.
What changes are you seeing in the trade mark landscape?
Trade mark protection is playing an increasingly important role in the Metaverse, and strategies and procedures for protecting and enforcing brands need to adapt to the rapidly growing digital marketplace. We are seeing an increasing number of enquiries from clients looking to protect their brands for virtual goods and services, as more and more companies are recognising the potential business opportunities that evolution in this area presents.
What career advice would you give to women interested in joining the IP profession and getting to your position?
Talk to people who are in the profession to find out more about what it’s really like, both in the early years and as your career progresses. Don’t be afraid to ask lots of questions. Look for opportunities to gain further insight into the profession, such as open days, internships and placement schemes. These initiatives are also a great way of getting a closer look at firms you are considering applying to. You can find out if a firm’s values and practices are aligned with your own values and career goals. For example, Dehns has a track-record of employing equal numbers of men and women, and of promoting women into senior roles. This was important to me when I was looking at firms, and ultimately lead to my decision to apply to Dehns.