WTR says: "Marina Perraki is an exceptionally engaging professional who is fun to talk to and who you can always learn something clever from. The Tsibanoulis & Partners IP head is a favourite of the C-suite - her counsel is commercially well-informed and easy to translate into actions that can be linked to business success"

"You need to be able to communicate well with colleagues and clients"

Can you tell us a little about your career to date?

I started off as a trademark lawyer in an IP boutique in Athens. I then joined Tsibanoulis & Partners as an associate and became a partner in 2007. In 2012 I obtained a PhD in trademark law at Queen Mary University of London. I am now the head of Tsibanoulis & Partners’ IP practice.

Your practice spans intellectual property, commercial law, financial services and mediation. What practical tips can you share on how to stay abreast of the latest developments across multiple areas?
The unique range of areas in commercial law (advisory and litigation) provides me with the competitive advantage of fully understanding the commercial implications of intellectual property. I find it extremely helpful that I have experience in commercial and corporate transactions. I have worked closely with CEOs and repeatedly led multiparty international negotiations. Being at the forefront of developments when your clients grow, make partnerships or commercial arrangements, or combat infringement, helps you to understand the business context in which IP rights function. In order to keep up to date with legislative developments and evolving case law, you need a good team, good legal resources (eg, WTR), and enthusiasm for what you do. My PhD enabled me to conduct in-depth research into all of the developments in modern EU trademark law, which has helped me to excel as a lawyer.

What are the top qualities that clients should look for when seeking world-class trademark advisers?
The first and foremost quality is a deep legal knowledge and understanding. Trademark law is a highly specialised area of law and one that is constantly evolving, particularly in an EU and international context. You need to have been working closely on trademark law for a long time to be able to master it. Superficial and fragmented knowledge is all too common.

The second quality is the ability to put trademark law in a business context and be strategic. You have to be able to see the whole picture. Trademarks are so closely linked to everyday life that you need to be able to understand them in their context and not in a legal vacuum.

The third quality is the ability to be proactive, creative and resourceful, to combine actions and come up with effective full-scale solutions that accommodate client needs.

Finally, given the necessary exposure to an international environment, due to the territoriality of trademark rights, you need to be able to communicate well with colleagues and clients from other countries and build trust with them.

You are a domain name dispute panellist and the UDRP is due for review. Would you make any changes to the mechanism or the way that domain names and trademark disputes are decided (and why)?
The UDRP is an effective tool for combating cybersquatting. Despite calls for improvement, I believe that the UDRP works well and fulfils its purpose. It is a simple, fast and low-cost process, which is ideal for such kinds of dispute.

As for trademark disputes, those that are straightforward and in good faith are the most appropriate for amicable alternative dispute resolution. Complex bad-faith trademark infringement disputes should be resolved in court or in arbitration, where rights holders should have the best representation possible. Often where the expected judicial outcome is obvious, an adverse ruling is issued, and vice versa. You would want to ensure that an adverse outcome is not the result of bad representation! Thus, always choose the best lawyer – not only to avoid adverse results, but also to try to ensure positive ones, even where your chances of success are low.

Finally, what advice would you give to those in the early stages of a career in IP law?
Love it or leave it! If you are an IP enthusiast, you will do great. Keep an open mind, make use of all the resources, uninterruptedly follow both national and EU case law and do not be afraid to come up with ideas. Be involved! Hard work is always rewarded. What I found really useful early in my IP career was being involved in important and challenging cases, closely following every aspect thereof and contributing my all. Always be willing to go the extra mile, not because you are asked to, but because you want to. Do not live up to the expectations of colleagues and clients – exceed them!

https://www.worldtrademarkreview.com/trademark-law/marina-perraki