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22 September 2017Trademarks

Marques 2017: GSK counsel speaks about changing in-house role

The assistant general counsel at GSK has said that the role of an in-house counsel has taken on a new meaning across all industries.

Speaking at the penultimate session of the  Marques 31st Annual Conference, Alicia Chantrey was explaining the successes and challenges of GSK’s Sensodyne sensitive teeth toothpaste.

After GSK purchased the brand in 1999, the team expanded the product from pharmacies into supermarkets, thus appealing to a wider audience.

The move saw the brand increase revenues from around £100 million ($136 million) to over £1 billion.

“As the in house advisor I have seen the evolution of the brand, and the IP team are looked at not only as lawyers and advisors, but we’ve now taken on a secondary role as part guardians.

“It is more than just numbers; we have a budget to manage but we have an underlying responsibility to maintain the culture of the brand but also move into the future,” she said.

She added: “We have to know which trademarks to continue, and in which jurisdictions. We unfortunately don’t have a £1 billion budget to go with the £1 billion brand.”

Chantrey was joined on the panel by Arnaud de Lummen of Luxembourg-based brand Luvanis.

Referencing the  Lambretta motorcycle, he discussed the “brand life cycle” and cited several examples of brands that wished to resurrect previous products, and if/how they can protect them from others.

Following the session was the annual update on case law at the Court of Justice of the European Union and General Court.

Philippe Péters of NautaDutilh chaired the talk and Patricia McGovern of DFMG Solicitors provided an update.

McGovern ran through dozens of cases, including the famous Louboutin ‘red sole’ verdict, in which the attorney-general gave the  opinion that Louboutin should be able to register red soles on high-heeled shoes as an EU trademark.

The Marques 31st Annual Conference finishes today.

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