[author: James Nurton]

The Hogan Lovells Brand Benchmarking 2018 report was published earlier this year. In the second of a series of articles, we look at some of the findings relating to the Technology, Media and Telecoms sector.

TMT companies accounted for 23% of the 200 responses to the survey, making them the second largest sector after Diversified Industrials. Their responses were different from the overall views in several respects, including regarding jurisdictions and attitudes to artificial intelligence.

More focus on EU and North America

Whether asked about the top regions for expenditure, where they expect to spend more in the next five years or the most challenging jurisdictions, TMT companies reveal different priorities to other companies – with the EU and North America generally being much more prominent.

In response to a question about which are the top regions for trademark expenditure, 21% of TMT companies said “EU” compared to 17% of other companies, while 22% of TMT companies said “North America” compared to 20% of others. The prominence of EU and North America among TMT companies contrasts with “East Asia” (mentioned by 42% of TMT companies compared with 47% of others) and “Asia – other” (6% versus 8%). East Asia includes China, Japan, Korea and Taiwan.

Perhaps even more surprising is that, according to the Brand Benchmarking survey, in the next five years TMT companies expect to spend more in the EU and North America.

Regarding prosecution, 22% of TMT respondents said they expect to spend more in the EU and 22% also said they expect to spend more in North America. These figures compare with 20% and 16% for other companies. Meanwhile, only 30% of TMT companies expect to spend more in East Asia (compared to 40% of others).

It is a similar picture regarding enforcement, with EU and North America both being named by 16% of TMT companies – while only 12% of other companies cited North America, and just 9% said EU. East Asia, though, was ranked top by both TMT companies and others with 42% saying they expect to spend more on enforcement there.

Most challenging jurisdictions

For both TMT and other companies, China is rated the most challenging jurisdiction for prosecution – mentioned by 26% and 23% of respondents, respectively. But beyond that again we see different priorities for the TMT sector. The US is ranked second (15%, compared to 9% for other companies) and the EU and Japan are both mentioned by 9% of TMT companies (compared to 3% of others).

When it comes to enforcement, China again tops the list of both TMT companies and others, while 11% of TMT companies named Japan and 11% also named India. Both these countries were ranked higher by TMT companies than by others.

When will AI have an impact?

Brand Benchmarking 2018 asked respondents when they thought AI would have an impact on trademark prosecution and enforcement. TMT companies were generally more cautious than others: just 42% thought AI would impact prosecution in 1-5 years, compared to 52% of other companies, while 18% of TMT companies said it would not impact prosecution at all (compared to 9% of others). Similarly, regarding enforcement, 30% of TMT companies expect an impact in 1-5 years (compared to 34% of others) while 18% of TMT respondents thought it would only have an impact beyond 10 years, and 18% said “not at all” (the comparable figures for other companies were 9% and 16%).

Analysis of trends

Compared to consumer goods companies, for example, many TMT companies don’t yet place so much emphasis on design protection. I would imagine that will change.

Morten Petersenn, a partner of Hogan Lovells in Hamburg, Germany, describes the TMT findings in Brand Benchmarking 2018 as “surprising”. He says: “I’m especially surprised that East Asia is not more prominent given that China in particular is extremely important for both manufacturing and consumers in the TMT sector.”

He suggests that one reason that the EU and North America rank so high in importance is because not only are they valuable markets but the legal systems are very convenient for litigating – and TMT companies have lots of experience litigating trademark as well as patent disputes in these regions.

Moreover, many TMT disputes are international and often involve an element of online or cross-border infringement. “If for example you can get a good judgment in the EU, that may be more relevant for TMT companies,” says Petersenn.

However, he predicts that future editions of Brand Benchmarking will show a greater focus on East Asia and other Asian jurisdictions: “We are seeing TMT companies looking much more into Asia as a market, and we are also getting more interesting clients from that region.” He also believes TMT companies will become more creative in protecting and enforcing their brands throughout the world: “Compared to consumer goods companies, for example, many TMT companies don’t yet place so much emphasis on design protection. I would imagine that will change.”

The findings regarding AI are counter-intuitive, says Petersenn, given that many TMT companies are leading investment in this area. “You would expect TMT clients to be more open to new solutions, but these findings suggest they are a bit more negative than other companies. It could reflect a more realistic understanding of the capabilities of AI and a reluctance to over-estimate its importance. Or: legal departments in the TMT sector are simply a step ahead compared to their peers in other industries.”

[View source.]