The IP experience according to Asia’s Women of IP31 March 2020
Women of IP, in honour of International Women's Da...
13 November 2018
Asia IP: What drew you personally to IP work? Why did you choose IP over other practice areas?
Dan Greif: I was lucky.
After law school, I clerked on the United States Court of Appeals for the Fourth Circuit. Then, I joined a firm in Washington, D.C., that specialized in several areas of law, including trademark law.
It was “love at first sight” as they say. I enjoyed everything about trademark law. The fun products and services of the clients, the sophisticated substantive analysis trademark law entails, and the people practicing in the trademark profession. I decided very quickly after joining that firm that trademark work was for me then and forever.
As a young trademark lawyer, I was fortunate to be mentored by Michael Grow (now a senior partner at Arent Fox), Nils Montan (later senior intellectual property counsel at Warner Brothers and INTA president), John Lanahan (former INTA president), Sheldon Klein (now principal at Gray Plant Mooty), Doug Henderson (founding partner of Finnegan) and David Kelly (founding partner of Kelly IP), some of the leading trademark lawyers in the world. Their passion for all things trademarks was and still is an inspiration.
Also, I had the distinct honor to work for and learn from Yoshide Nakamura at Sony Corporation in Tokyo, who was formerly the head of Sony’s intellectual property team.
AIP: You are still, perhaps, best-known in the region for your 17 years as trademark counsel at Coca-Cola. What are some of the most important things you learned from working at the world’s largest beverage company?
DG: Well first – it was an honour.
To have the opportunity to work for the Coca-Cola Company and its famous brands as a young lawyer was an opportunity I had never imagined. Every day at Coca-Cola presented exciting, challenging, cutting-edge and fun trademark work.
Coca-Cola has more than 500 sparkling and still beverage brands, 21 of those brands generate more than US$1 billion each year. It was a privilege to assist with such iconic brands.
Every day, we were working on new and exciting multicountry marketing campaigns for billion dollar brands, trademark acquisitions, trademark licensing matters and high-profile complex contentious trademark matters. It was non-stop excitement.
Once again, I was fortunate to have another great mentor in Jim Johnson (now intellectual property counsel at Eversheds Sutherland). Jim was already a legend in the trademark world and I was in awe of him and his trademark knowledge and ability to find excellent and commercial solutions for trademark issues. And, Jim was very kind in sharing with me his trademark knowledge and his incredible knowledge of the business of Coca-Cola.
As to what I learned, I learned commercial solutions that further the business are paramount. Nothing else really matters. Business clients want advice and concrete recommendations that allow them to make sales.
Also, I learned that litigation should be avoided, unless absolutely necessary. Litigation is expensive, time-consuming and uncertain. And, it directs focus and energy away from sales of the products. Our job as Coca-Cola trademark lawyers was to try to further the sales of the company’s products, not to get the company stuck in unnecessary litigations and to try to impress with our trademark and litigation brilliance.
Of course, litigation is necessary at times and, when litigation does take place, I leaned that it is necessary to pursue it aggressively to win or to use it as a vehicle to reach a resolution as quickly as possible. As part of the litigation process, I learned to constantly search for win-win solutions and that such winwin solutions often exist, allowing avoidance of the potential detrimental effects of litigation.
In addition, I learned that trademark lawyers should strive to be seen as part of the management team. Sometimes in corporations, the legal function can be seen as a “necessary evil” in that companies need lawyers, but lawyers can be seen as not generating revenue.
At Coca-Cola, the outstanding legal leadership highlighted the importance of lawyers providing sound commercial advice and working to understand the objectives of business management. By doing this, we were taught that we must act as both business people and as trademark lawyers.
Finally, at Coca-Cola and by living and travelling around the world, I came to appreciate the great value that diverse cultures, people and business strategies bring to the practice of intellectual property law and business in general. Being exposed to so many esteemed trademark lawyers from many countries around the world and having the chance to learn from them is something that has made me a better lawyer and person.
AIP: How many different brands were you handling at the time? Did your protection strategies differ based on the brand? Did the cola products require different protection strategies than did, say, Fanta or Sprite or Schweppes?
DG: When I was at Coca-Cola, the trademark lawyers handled all of the brands for the geographic areas they covered. Thus, I would be working on hundreds of brands at any one time. Of course, brands such as Coca-Cola, Sprite and Fanta were the biggest brands at the time and a lot of attention and time was spent on such leading brands. The work would cover any and all trademark related issues for Coca-Cola.
For most of my career at Coca-Cola, I was living abroad. With Coca-Cola, I lived in Hong Kong twice, Bangkok, Sydney and Vienna, with short-term postings in other countries as well. And, when I was with Sony, I was based in Tokyo. And, I had the opportunity to travel to almost one hundred countries assisting with trademark matters. In Vienna, my trademark geographic area covered more than 40 countries and, when I was based in the Asia-Pacific with Coca-Cola, my geographic responsibility covered more than 30 countries.
These were exciting and rewarding postings, with constant and complex trademark and other intellectual property work and challenges. There was not a lot of “down time,” but that was fine with me as I was enjoying the international trademark work, furthering the business objectives of Coca-Cola, travelling and having the unique opportunity to make many life-long friends around the world.
Like any sophisticated brand owner, Coca-Cola had differing nuanced approaches to the way it would handle the trademark matters for each of its brands. For instance, for billion-dollar brands, many brand owners have a more rigorous trademark searching and clearance process than they do for less valuable brands. Also, brand owners often make trademark filing decisions based on the long-term viability of brands and the potential commercial success of the brands.
AIP: What were some of the challenges you faced working as a regional trademark counsel?
DG: One of the greatest challenges was clearing trademarks across multiple countries for proposed new brands and marketing initiatives. At times, we would be trying to clear a new mark for many countries and one or two countries would be blocked. At that point, an analysis needed to take place to determine whether to try to clear the mark through the legal avenues possibly available such as non-use cancellation actions, acquisitions, consent arrangements, etc. If none of those options were viable, then it was necessary to consider using differing marks in the blocked country or going forward with the risk created by third party trademarks. These were tough situations requiring difficult decisions, with millions of dollars of repercussions depending on the outcomes.
Obviously, when a brand-intensive company plans to introduce new brands across multiple countries, there are significant commercial concerns when the mark is blocked in one or more countries. Such instances can directly adversely affect important commercial propositions of companies.
In the nineties, one of the greatest challenges for Coca-Cola was counterfeits and infringements. I was based in Vienna at that time and handling trademark matters in Russia, the former Soviet republics, Eastern Europe, the Balkans, the Baltic States and the Middle East. All of those regions had significant infringement issues. Most of these countries had excellent intellectual property laws. However, the courts and the enforcement authorities were often in their infancy so they had little experience in how to address intellectual property matters.
I spent a lot of time travelling to the countries in these regions to meet with government officials, trademark office officials, police, customs officials, etc. to assist with the vast array of Coca-Cola trademark matters and in stopping infringements of Coca-Cola’s brands. There were so many infringements happening at any one time that it was challenging to determine which infringements to address and where best to focus resources and legal initiatives.
Over time, our anti-infringement efforts worked and the number of infringements decreased. It was an extremely exciting time, especially in Russia, the former Soviet republics and Eastern Europe, as these countries were transitioning to capitalism and new legal systems. In many of these countries, there was an incredible sense of excitement and optimism for the future.
The challenges were similar in China. In 1995, I spent six months travelling around China to almost 20 cities to assist in setting up Coca-Cola’s enforcement program. Once again, effective intellectual property laws were on the books. However, the authorities and courts in China at that time did not all have a clear understanding of the laws and how to implement them. We assisted to educate the authorities on the laws and on the trademarks of Coca-Cola. These meetings assisted and over time the Chinese authorities began effectively addressing infringements of Coca-Cola’s brands and numerous raids of infringing products were conducted.
I greatly enjoyed the opportunity to assist in having a positive impact for the Coca-Cola brands and travelling in these countries as they transitioned.
AIP: How different were the company’s product lines from country to country?
DG: Many of Coca-Cola’s drinks, such as Coca-Cola Classic, are available in over 200 countries worldwide, whereas other drinks are only available in certain countries.
Coca-Cola tailors its drinks to local tastes. Some flavours are more popular in one country than another and often there are different ingredients in different countries.
Japan is fascinating in that Coca-Cola creates many new brands and sub-brands each year in Japan, some of which do not last long. Japan is unique as it is a very dynamic and fiercely competitive market, where innovation is key.
Japanese brands include Georgia Coffee, I Lohas mineral water and Coca-Cola Clear. Plus, Coca-Cola just recently – in Japan -- released its first alcoholic beverage called Lemon-Do.
AIP: Can you share a story with us about your reaction the first time you saw the Coca-Cola brand stolen after you started working for the company?
DG: On day one at Coca-Cola, I attended a presentation on the trademarks of the Coca-Cola Company. That presentation was given to all new employees. It educated Coca-Cola’s employees on trademark law, the importance of the company’s trademarks to the business, and the importance of company employees always using the company’s trademarks properly.
As part of that presentation, we were also shown examples of infringing products of the Coca-Cola brand and other important brands of the company. The variety and types of infringements shown was incredible.
Needless to say, I was excited to get started having the opportunity to assist stopping infringements against Coca-Cola’s trademarks, and to otherwise assist in developing, registering, protecting, and enhancing the trademarks of the Coca-Cola Company. I was not disappointed. It was an exciting and fun time and a privilege to be part of the process of creating, registering, enhancing and protecting such iconic brands and to live and travel around the world.
AIP: But I think the real question on everyone’s mind about your time at Coca-Cola is: do you know the secret formula?
DG: Well …. Yes and no.
There have been many books written about Coca-Cola and one of those books published what it said was a copy of the original Coca-Cola formula at the end of the book. Whether it is the original Coca-Cola formula, I don’t know.
I believe it doesn’t matter whether it is the real formula in the back of that book or not. To me, the most important aspect of brand Coca-Cola is the positive associations consumers have with the brand and the loyalty those positive associations instill in consumers.
To me, the Coca-Cola brand has always represented optimism. Wherever I would travel around the world when I was working for Coca-Cola, people would smile when I told them I worked for Coca-Cola. Coca-Cola is immediately recognizable to consumers around the world, and the fame of the mark makes it easier to protect, while also making it a target for infringing activity.
AIP: At Coca-Cola, I understand you worked to register the Coca-Cola 3D Contour Bottle. Can you tell us about that? DG: Yes, throughout my career I have taken a strong interest in configuration trademarks and other types of non-traditional trademarks, as well as the overlap and interplay between trademarks, copyrights, designs and other intellectual property. And, the iconic Coca-Cola Contour Bottle gave me a concreate opportunity to assist in progressing the acceptance of configurations as 3D trademarks. This was particularly true during my time in the Asia-Pacific.
While I was based in the Asia-Pacific, we succeeded in getting the Coca-Cola 3D Contour Bottle (with no word mark or design branding) by itself registered as a 3D configuration trademark in a number of countries. This was quite a challenge as – at that time -- the trademark offices had little if any experience with registering non-traditional trademarks and they were reluctant to do so.
Japan is particularly notable. The Japan Trademark Office rejected our trademark application for the 3D Contour Bottle. Eventually, an appeal was made to the Japan High IP Court. With the excellent assistance of the Yuasa and Hara law firm, we succeeded in getting the Coca-Cola 3D Contour Bottle registered.
To get the 3D Contour Bottle registered, we had to submit over 130 exhibits and make extensive persuasive arguments. Finally, after extensive exhibits were submitted and extensive arguments were made, the Japan IP High Court ruled the Coca-Cola Contour Bottle can act a 3D registered trademark.
The Japan High Court gave four main reasons for recognizing the distinctiveness of the Contour Bottle: (1) the bottle had been used extensively in Japan, (2) the bottle was used as a brand symbol in advertising in Japan, (3) surveys showed that consumers recognized the origin of the 3D Contour Bottle without any word mark or logo and (4) and expert witnesses testified that the Contour Bottle was an example of a 3D trademark.
In the years following the Japan IP High Court Decision, Coca- Cola succeeded in getting the 3D Contour Bottle registered in a number of other countries across the Asia-Pacific.
Since I started working in the Asia-Pacific in the 1980s with Sony until now, I have seen tremendous progress in the acceptance of non-traditional trademarks. These early 3D Contour Bottle decisions assisted in paving the way for what is now a much greater acceptance of a number of types of nontraditional trademarks across the Asia-Pacific such as trademarks for sounds, color, position, motion, holograms, 3D configurations, designs, trade dress, etc.
AIP: Post Coca-Cola, you’ve had an interesting career in law firms, including as head of IP at Siam Premier International and now as a principal at Spruson & Ferguson. Is it possible to say which you prefer, being in-house or in private practice?
DG: They are both great and they both have their challenges and rewards in terms of career fulfillment.
I have to say though there is nothing like working for a company that is at the top of its business and trademark game and experiencing the excitement and fulfillment that comes being part of a team bringing outstanding value to its customers. I had the opportunity at both Sony and Coca-Cola to work for two such companies. Further, those companies are absolute thought leaders in how they address their trademarks and other intellectual property. Thus, needless to say, working at Sony and Coca-Cola have been among the highlights of my career.
On the other hand, working on trademark matters for outstanding law firms like Spruson & Ferguson now and Finnegan many years ago brings great satisfaction as well. The wide variety of work and clients covering numerous industries is interesting and exciting. And, I have found the need to address highly sophisticated and complex intellectual property matters in detail as a rewarding aspect of private practice.
In-house trademark lawyers have great sophistication on the trademarks of their companies and they push us as private practice lawyers to be at the top of our game. I enjoy working with such outstanding in-house trademark lawyers and learning from them. Also, I enjoy working with outstanding private practice lawyers such as my colleagues at Spruson & Ferguson that consistently bring great value to the trademark and other intellectual property matters of clients.
AIP: How does having some in-house experience benefit a lawyer in private practice? Or, to put a different way, does a lawyer with in-house experience often view things differently than one without such experience?
DG: In house experience does benefit a lawyer in private practice in that, as an in-house lawyer, you learn to come at legal matters from a commercial perspective. Many private practice lawyers, who have never been in-house, have a strong commercial perspective as well. However, as an in-house lawyer, you live and breathe every day the commercial perspective and it stays with you.
Also, as an in-house lawyer, you learn to get to the important points of legal matters and to give concise clear direction and recommendations to your clients. Once again, I have seen many private practice lawyers, who have never been in-house, communicate this way.
Finally, being an in-house trademark lawyer presents a great opportunity to develop client relationship skills as you have the opportunity to work with senior business and marketing management on a daily basis. And, there is a lot for trademark and intellectual property lawyers to learn from senior business and marketing management as they are incredibly business savvy people who know how to achieve business objectives and commercial success.
AIP: You were probably one of the first Western lawyers on the ground in Myanmar, and you have often spoken enthusiastically about that country. What draws you to working in developing countries such as Myanmar? Do you have much opportunity to work in such places now, or are you mostly focused on Thailand?
DG: While Thailand is the main focus of my trademark work, I am working on trademark matters throughout Southeast Asia, and beyond.
At Spruson & Ferguson, we have an outstanding trademark team, led by the highly-experienced trademark lawyers Tracey Berger and Coral Toh, with nine offices across Asia-Pacific, which allows me to assist on trademark matters in a number of countries. Also, where Spruson & Ferguson doesn’t have “direct” offices, we have excellent strategic relationships with local IP firms, which allows us to assist our clients on a multi-country basis across the Asia Pacific.
I have had the opportunity to work on trademark matters in developed countries, semi-developed countries, and developing countries. The developing countries are always challenging and fun. Often, in these countries, you are presented with trademark matters and cases of first impression. This allows you to have an opportunity to play a small part in assisting to shape trademark law and practice for generations to come.
For Myanmar, I have been involved with INTA on providing insights and suggestions on the proposed new (the first) trademark law for many years. Now, the new law is close and everyone is waiting in great anticipation. The new law will enhance the intellectual property rights of brand owners and enhance trademark efficiencies, which – in turn – will assist the well-being of Myanmar’s citizens and further commercial progress of Myanmar.
Working in developing markets like China (in the 1980s and 1990s), Eastern Europe and Russia (in the 1990s), and countries such as Myanmar now provides a great sense of satisfaction as you can see how the furtherance of trademark and other intellectual property law assist these countries, leading to a greater standard of living and prosperity of the people. Also, the people in such developing countries often display great optimism as they can see a brighter future ahead. It has always been exciting and fulfilling to experience that excitement and to contribute in a small way.
Finally, I have loved getting to know people around the world, experiencing different cultures, and making wonderful friends in numerous countries. For this and so much else, I have the trademark legal profession to thank.
AIP: The IP scene in Thailand and Southeast Asia must be almost unrecognizable to when you began working in the region. How has what you do on a daily basis changed?
DG: Definitely, the use and importance of technology has changed. Technology makes everything happen fast and the things that technology can do have developed tremendously.
Communications takes place immediately and immediate answers are expected. Technology can do many of the tasks that administrative, paralegal, and even lawyers did in the past. Largely, I would say technology has brought positive developments as clients can receive faster and even better advice.
The technology trend will, of course, continue to disrupt the trademark and intellectual property practices with AI, blockchain, crypto currencies, etc., here and on the horizon. Over the next 10 years, I believe our profession will go through dramatic changes. Needless to say, I believe trademark and intellectual property lawyers will need to be flexible and willing to accept the changes and implement them enthusiastically in ways that benefit the profession and clients.
AIP: We’ve known each other for a long time. One of the things I’ve noticed every time I’ve visited your office is your interest in building up the careers of the young lawyers working under you. When hiring, what sort of skills and traits do you look for to help ensure that you’ve found someone who will fit in well at the firm?
DG: First and foremost -- a positive attitude and being a team player.
A big part of trademark and IP practices is about working with others and making things work as a team. This requires a lot of interaction with others to put out a strong work-product and find the best solutions for clients. Having a positive attitude and being able to work with others in a positive manner greatly contributes to achieving these goals.
Next, I would say a great desire to learn.
The best young – or older -- lawyers aren’t always the smartest. I have found the best young lawyers are the ones that demonstrate a great interest in the law and a willingness to continuously learn and improve their skills. Fortunately, we have many such young lawyers at Spruson & Ferguson and I have had the opportunity to work with many other young lawyers over the years that demonstrated these and other positive traits.
In many respects, the quality of young lawyers today is better than ever.
Young lawyers today are often multilingual and have excellent IT skills. Further, they embrace change and adapt quickly to change. And, with rapid changes taking place in the legal profession due to the rapid development of IT, and with other significant and disruptive technologies on the horizon, in the form of AI, block chain, etc., it is more important than ever to have an open and positive attitude towards change. Fortunately, young lawyers today have this attitude.
Finally, many law schools today have courses, and at time whole curriculums, dedicated to intellectual property law (this wasn’t the case in the past). Thus, many young lawyers coming out of law schools today are ready to “hit the ground running” and make significant positive contributions to the trademark and intellectual property practices they join.
AIP: What are some of the changes to your practice that make you say to your colleagues, “Do you remember when we _________?”
DG: Well …. Yes. Not to date myself too much, but I remember when –
• We used teletype machines to communicate with overseas agents.
• We started using fax machines.
• We didn’t have computers in our offices.
• Cell phones didn’t exist.
• The internet didn’t exist.
• We would dictate drafts on to tapes and secretaries would transcribe them and bring you drafts.
• Clients were fine with responses taking a week or more.
• INTA was the USTA.
• There was no intent to use in the USA.
• A 5 minute overseas telephone call back to the States from overseas would cost US$100.
• Hard copy USA trademark search reports were used and they would sometimes be 2 or 3 inches thick.
• Many countries only had a few intellectual property law firms.
• We wore suits to the office.
AIP: What excites you about getting up in the morning and coming to work?
DG: Trademark law!
It is a challenging, exciting and fun area of the law. I enjoy assisting clients to build their brands and grow their businesses, which in turn furthers prosperity and the well-being of consumers. And, it has been an honor to work on trademark matters for many of the world’s most significant, valuable brands and well-known brands.
I enjoy acting as the pro bono trademark lawyer for several environmental and charitable organizations, and being involved in the International Trademark Association. In particular, I enjoy being the worldwide pro bono trademark lawyer for TRASH HERO World/Thailand, a wonderful organization making a positive impact on the environment in a number of countries. Also, I enjoy being on the Global Advisory Council of the International Trademark Association.
Finally, I greatly enjoy getting to know and working with people around the world that share my love of trademarks, and having the opportunity to continue to build strong relationships and friends in many countries.
I am lucky to have found trademark law early in my career. I am forever grateful for the trademark profession and for the opportunity to work, live and travel around the world and for the opportunity to work with and get to know so many outstanding trademark lawyers and practitioners around the world.
Women of IP, in honour of International Women's Da...
Asia IP Profiles 2020 ranks IP firms across APAC.
Breakdown of the different types of IP financing.
Please wait while the page is loading...