Desirée Russo, trademark counsel for Puma
2 May 2024NewsTrademarksSarah Speight

‘I can be myself’: Puma’s TM leader keeps up with the competition

From chasing counterfeits to pivoting to the metaverse, NFTs, and now AI, Desirée Russo proves it helps to be agile at one of the world’s largest sportswear brands.

Desirée Russo has forged an impressive path in her short career to date.

With just six years in the IP profession under her belt, she has shot up the ladder to become trademark counsel for Puma, based in Herzo, Germany, where she has worked since 2021.

Initially responsible for Africa and Europe, she now covers Latin America, the Caribbean, Oceania and Italy.

Indeed, since achieving her Bachelor of Laws in 2014 at the University of Torino, Italy—her home town—Russo has cultivated a truly international professional CV.

In 2020 she completed a prestigious Master’s degree at the University of Alicante, Spain devoted to trademarks and designs, copyright and competition law.

After working at a small Italian IP firm in Torino, she moved to Alicante, Spain, where she was legal intern in the Boards of Appeal at the EU Intellectual Property Office (EUIPO) for the Pan-European Seal Programme.

Just three years after being a trainee on the "other side of the stage", Russo returned to the EUIPO for the office’s 5th Edition IP Case Law Conference 2024 this week (April 29-30), where was a panel speaker.

In her presentation, Challenges of revamping trademarks: An in-house counsel perspective, she walked the audience through the history of the Puma trademark and the challenges it has faced.

Set up in 1919 by two brothers who fell out and went their separate ways 28 years later, Puma’s story is a colourful one, not least the evolution of its logo which actually began as a bird.

And the Puma logo we know today actually evolved from another type of jumping cat—a panther.

As Russo explained in her presentation, this was in honour of the “characteristics of a Puma, such as speed, sleekness, resilience, agility, [that] would have guided the athletes to their victories”.

These, WIPR discovered, are seemingly apt qualities for Russo, who is evidently a rising star within the IP world.

Over coffee at the EUIPO headquarters in Alicante, in between conference sessions, WIPR sat down with Russo to discover more about her role at Puma, her ambitions and her views on diversity and inclusion.

WIPR: What is your favourite aspect of your role?

DR: One of the aspects I appreciate the most is the chance to get in contact with people from all over the world. So there is the exchange of views and ideas [that are] not only IP related.

It's interesting for me, because I can grow not only from a professional point of view, but also culturally and personally.

This exchange of views is enriching for me. From an IP perspective, it is really interesting to get to know different systems, compare them and find similarities and differences.

It's also challenging at the same time. The job is never the same—in a day, you can deal with thousands of different [things]. So I'm always thrilled by what I have to do.

What are your main priorities right now at Puma?

Our main priority is to get our marks considered as notorious, to get the well-known status in all jurisdictions, but the main challenge we're facing is to get notoriety here in Europe. So this is my biggest ambition at the moment, even though I'm not responsible for Europe anymore.

I was responsible for Europe and Africa when I joined Puma. Now I'm responsible for Oceania, Italy, Caribbean, and Latin America.

Of course, everything we do in different jurisdictions can have an impact on other sides of the world. [For example] being responsible for Latin America doesn't mean that I have nothing to do in Europe, because the impact of our decisions in Latin America can resonate into Europe. So this is my number one goal.

I'm also involved in education programmes with our Puma colleagues worldwide. We organise IP days with our colleagues in Puma offices worldwide, to foster IP knowledge and the importance of preserving IP rights.

And, of course, I give training to customs and the Guardia di Finanza [Financial Police] in Italy. So this is also another priority, the dissemination of IP knowledge with authorities, with customs, to prevent counterfeiting activities.

What is Puma’s strategy for the defence and enforcement of its trademarks?

I'm responsible for trademark protection, prosecution only. This means that I have to constantly be monitoring international registries, especially those in my areas of responsibility.

Every time we detect an infringing application or registration, we have to counteract. If it's an application, we move on with an opposition. If it's already a registered trademark, we file a cancellation action.

We have service providers, of course. But we are also very attentive to market trends. We also welcome external feedback from customers, or our own feedback. For example, when we travel, we pay attention to what we see around us. Every time we detect something which is potentially counterfeited, we need to act immediately.

One of the things I appreciate the most is that we have a strong synergy among colleagues. So a pure trademark prosecution case doesn't mean that it has nothing to do with enforcement. I have to work together with my colleagues on cases to act both on the brand protection side and on the prosecution side.

Regarding counterfeits, what are your main concerns?

We are constantly monitoring big e-commerce platforms. But we are now also paying attention to emerging platforms and emerging trends, both online and offline.

For example, there is a section in TikTok dedicated to the sale of goods like, for example, Facebook Marketplace, although it's not active in every country.

How is Puma tackling the impact of AI? Are you concerned about its risks?

There is a huge debate on authorship and generative works, so we have to constantly monitor this trend. Because maybe one day we will use AI-generated pictures, for example.

We have a dedicated committee within Puma devoted to the analysis of AI, composed of several colleagues from completely different departments, so we tackle the problem from different points of view.

For example, we have a member from our IP team, and others from the management board and the compliance team.

We are already in the metaverse, but this was a trend two years ago, and now nobody talks about it. We filed our NFTs like every company in the world. Now nobody’s talking about NFTs anymore.

AI will have a big impact, together with sustainability, inclusion and diversity. These are the biggest topics on the horizon, not only from an IP perspective, but also from a social point of view. [And] we have to adapt to market trends.

Have you faced barriers during your career?

It was hard for me to gain trust. But when you find a leader that believes in you, trusts you, and is proud of you, that’s the biggest compensation for all the sacrifices you’ve made in your life.

It wasn’t always easy, of course.

One of the aspects I love the most about being at Puma is that I am myself. No matter if I am a woman, if I’m young, or if I’m blonde!

Just being yourself is a great gift, because you can perform well. You feel free. You can express your ideas without the fear of being judged.

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