Jan Dohnal from Trama: “IT tools are increasingly entering our daily tasks. But there is still significant space for improvement”

The legal field is becoming increasingly automated with the help of modern technologies, and the segment of intellectual property law is no exception. Automation in the legal field can reduce the time and costs associated with many legal tasks, allowing trademark lawyers to focus on more complicated cases. In this interview, Jan Dohnal, Senior Trademark Lawyer at Trama, talks about how technologies affect his daily tasks, helping him and his company to provide access to quality & affordable trademark registration services across the globe.

Jan, what got you into intellectual property law?  

I studied at the Faculty of Law at Masaryk University in the Czech Republic, and very early on, I heard about intellectual property law. I hadn’t encountered it before because it’s not as typical as other fields of law. But, I got very interested in learning about these intangible assets. So, I took the IP course beforehand in contrast to official schedule in the curriculum and started diving deeply into that area through some extra activities, like attending conferences and joining several projects, which eventually led me to join the International Trademark Association as a scholarship-awarded student.  

Can you briefly describe your career path in the field of intellectual property law? 

As a law student, I started working in a law firm in the Czech Republic. I joined as a Junior Associate after graduating and spent a couple of months advising clients on trademark matters. Then I got an opportunity to join the European Union Intellectual Property Office (EUIPO) as a trainee, so I went there in September 2019. Then, a regular employment contract followed. In total, I spent three years in the EUIPO in the Operations Department, where all the trademark applications are being handled and screened.

What made you focus on trademarks?

I like this basic idea behind trademarks, which is distinguishing the source of the business origin of the goods and services. I find it fascinating that when you see the brand, you immediately attach some personal consumer feelings with it that you expect, for example, the quality of the products and so on, and that you are sure that it comes from this one particular business source. And importantly, it’s a highly entertaining area to work with. 

What made you join Trama? 

I joined Trama in October 2022. At that point in time, I was considering a change concerning my career development, searching for possibilities out on the market. When it comes to Trama, I have already been observing the company since early 2020. I liked the emphasis on the combination of law and technology and the significant potential behind it. I started following Trama online, and then I got in touch, we had an interview, and it was a perfect match for both sides. 

Could you give me a brief overview of your current responsibilities in Trama? 

I work for Trama as a senior trademark lawyer and am responsible for EU opposition and cancellation cases, coexistence agreements and so on. Internally, we call it the “follow-up agenda”, which refers to services provided to clients after they submit their trademark application.

Could you explain in more detail what a trademark opposition procedure is? 

There are two ways to look at it. In the first scenario, our client’s trademark application is being opposed, and in another, we are filling opposition against a new application of the third party on behalf of our client. 

Once we do the initial trademark verification and screening on behalf of our clients, we warn them about potential risks associated with their application, due to, for example, similar earlier registered trademark. If, in the end, they decide that they really want this trademark despite the potential risk of opposition, we will proceed with the application. Once the trademark passes all the absolute grounds examination and formalities, it gets published in the Trademark Journal, which marks three months long opposition period when the third parties can oppose the trademark if they feel that the new trademark application is similar or identical to their already registered trademarks. If somebody files an opposition, we are informed by the respective IP Office and begin preparations for the opposition process. This is where I come in, as I do the assessment of the case and communicate directly with the client about potential ways to resolve it.  

In another scenario, we inform our client about a similar new trademark application or  clients directly approach us to represent them in the opposition proceedings. So, in such a case, we usually contact the counterparty first and try to negotiate a mutually acceptable agreement. Alternatively, we trigger opposition proceedings, prepare the legal arguments to substantiate the similarity claims on behalf of our client. Afterwards, the respective IP Office takes into account our observations and issues a decision on whether the trademark application of the counterparty will be accepted or not. 

You mentioned that what caught your attention about Trama was the combination between the field of law and the use of technologies. Where do you see technology playing a part in your daily routine? 

Technology touches every aspect of my daily agenda. It simplifies our workflow profoundly. Our internal tool, which we are using for docketing all the trademarks, helps considerably with the screening process of new applications. For example, when we are assessing the registrability of the trademarks, whether it’s distinctive or not, and whether there are some conflicts in the database with already registered marks. Instead of writing it in the “old school” way in an email with the attachment of similar trademarks, which would take a lot of time, we just fill in the needed information, and it is done automatically, which massively speeds up the whole process.

How in touch do you feel with the development team? 

This was another thing that really impressed me about Trama. The fact that we have in-house developers who are always ready to implement our ideas. That’s not very common. Normally, law firms have some built-up internal system which simplifies their work, but, usually, it’s just a bought product from some IT company. But having developers in-house is quite irregular but extremely helpful as there are always some suggestions from the legal team on how the tool could be improved. And in Trama, I see a fantastic response from the IT team. 

Where do you see the potential of technologies in the field of law? 

IT tools are increasingly entering our daily lives, speeding up the work and delivering better quality. But there is still significant space for improvement. One of the current hot topics in the IP world is whether a system can help lawyers in opposition proceedings. A tool that, based on all the analysed case law, would be able to suggest what factors the respective IP Office will consider when making a decision. However, I’m inclined to believe that we are still rather far from being able to rely on such a tool, as personal educated judgment continues to play a crucial role in such cases. Although I can well imagine how technologies could further assist us with automated check of the trademark distinctiveness, which is the ability to function as a trademark. Advanced IT tools could assess meanings of the signs in various languages in connection to the claimed goods and service, while taking into account previous decision practice of the relevant IP Offices. Nevertheless, I am convinced that a human perspective and corresponding double-check is essential to use such automated assessments.

So, as of right now, lawyers should not fear anything? 

No, nobody is coming after them, not in intellectual property. 

Would you like to share some insightful advice for aspiring IP practitioners?  

I will put it straight: for all the students or young law practitioners considering working in the IP field in general or precisely the trademark field – please go for it. It’s a stunning field to work in. I suggest doing extra steps, already during studies. Do not just be satisfied with the standard curriculum and intellectual property law as a subject, but take a look around what’s out there. There are plenty of interesting conferences or projects you could join that could help you stand out from the crowd. All these extracurricular activities will do wonders for your CV.