Making his mark

From cosmetics to Field Fisher via the Paris Ritz, John Olsen has had a long fight to get due recognition for his trademark practice. Steve Hoare reports

As we enter the meeting room, the first thing John Olsen does is hand me a present. At first glance it seems to be a tin of beans. And then I read the logo – ‘Success comes in cans, not in cannots’. Apparently, Olsen gives all his staff these cans. His quietly-spoken, laid back demeanour seems completely at odds with this kind of US-style motivation-speak, but as the conversation develops you can sense a steeliness and determination behind the easygoing Californian charm.

As head of Field Fisher Waterhouse‘s trademarks and brand protection group, Olsen has a singular vision of how the practice should operate. This vision has caused some ructions at previous firms, but at Field Fisher he seems to have found an organisation that believes in his approach and has allowed it to flourish. Field Fisher is the first law firm to finish above the trademark agents at the top of the community trademark filings table (see The Lawyer, 31 March) and the firm has just backed Olsen’s new Isosceles patent service venture.

Olsen moved to Europe in 1983. Ten years into his career as a trademark lawyer, he escaped the apparently “vicious” world of cosmetics at Max Factor and fell into the welcoming arms of Mohamed Al-Fayed.

At the beginning the job was a dream move for Olsen. He moved into the Paris Ritz for six months and began working for the Ritz Hotel and Harrods, trying to regain lost trademarks so that they could be licensed out. “That’s very difficult to impossible. It’s like trying to put the genie back in the bottle,” says Olsen.

It was an intellectual challenge that provided Olsen with a unique experience, but Al-Fayed soon lost interest in the trademark programme and so Olsen sought opportunities to spread his wings. After four years he quit in-house life for Clifford Chance.

Olsen says his time spent in-house was invaluable and that he would recommend it to anyone. “It helped me care a lot more about what services are provided to a client. Caring about what’s happening is really an essential ingredient of having a successful client relationship,” he says.

Olsen’s vision of a modern trademark practice was starting to crystallise, but Clifford Chance’s partners did not share that vision. “I had disagreements with the partners. I left Clifford Chance because the role that I’d envisaged of lawyers doing trademarks work was not what they wanted for that department. They had a more traditional practice. They hired trademark agents or attorneys to be the fee-earners,” he says.

Ultimately, Olsen felt that, as a non-contentious trademark lawyer, he had zero chance of making partner. He thought he could do better elsewhere and so packed his bags for SJ Berwin, which he believed had a track record of growing small practices.

SJ Berwin allowed Olsen’s vision to grow. He joined as head of the trademarks group and worked his way up from assistant into the equity partnership. “The paradigm was lawyers doing trademarks. In my opinion, the lawyer’s horizon is broader than the trademark agent’s horizon. Being trained in law is essential to give most clients the type of advice they need. I think that the profession of a trademark agent is a tradition whose time is past. There are some fine technicians, but you need to give clients the broad scope,” states Olsen.

After 10 years SJ Berwin told Olsen that it no longer wanted to support the trademark filing practice. Olsen did not want to part with it, so four years ago he took his team of 16 to Field Fisher. In addition to a top trademark team, the firm inherited clients such as LogicaCMG and Time Warner, with its many subsidiaries such as DC Comics, New Line Cinema, the Loony Tunes group and a young wizard called Harry Potter, who is proving rather profitable.

The firm also seems ready to back Olsen’s judgement. Since qualifying as a trademark and patent attorney in Los Angeles 30 years ago, Olsen has been keen to promote a fully integrated intellectual property practice. “I think things are compartmentalised for the benefit of the firms and not for the benefit of clients,” he says.

“In the knowledge economy, if you grant that intangible rights are at the core of that economy, then one must deal with those rights from inception to creation, through to management and exploitation – the complete cradle-to-grave service,” he adds. “Otherwise, clients will be getting a very disjointed kind of advice. There’s no consistency. And to realise these rights, you have to be consistent.”

Field Fisher has just launched Isosceles, which the firm claims to be a fully integrated patent service, with patent attorneys Mathys & Squire. Isosceles is Olsen’s brainchild; he is chairman and it is his attempt to replicate for patents what he does for trademarks. It is an attempt to combine the technical knowledge of the patent agents with the business knowledge of Field Fisher’s lawyers. “We also have a lot of clients with a patent portfolio, so it wasn’t good to only be dealing with part of their intangible rights portfolio,” he explains.

Being a joint venture, Isosceles does not exactly replicate Olsen’s trademark model, but after numerous discussions and consultations this seemed to be the best approach. UK Law Society rules prevent full integration and there are very few lawyers that write patents.

Olsen is hoping that Isosceles will succeed where marriages between patent attorneys and law firms at places such as Stephenson Harwood and DLA have failed. In 2001 Stephenson Harwood’s patents team moved to Kilburn & Strode and DLA sold its patents unit to Harrison Goddard Foote. “The concept of importing patent agents into a law firm, or vice versa, has a fatal flaw – they can never be full partners. No self-respecting professional wants to be an employee forever,” claims Olsen.

Mathys has been Field Fisher’s sole patent agent for more than five years, but Isosceles is an attempt to create a united front and a seamless service. Olsen is bullish about the prospects of the venture. “Hopefully Isosceles will change the paradigm of patents practices,” he says. “I hope you’ll see more and more clients demanding this integrated approach.”

Since arriving at Field Fisher four years ago, Olsen has more than doubled the size of his trademarks group. He manages a team of 38, which includes three partners and 10 other lawyers. This unusually large support group is essential for running the team’s database and managing a portfolio of more than 20,000 trademarks. Despite the size of the support team, or perhaps because of it, Olsen is proud of a 95 per cent realisation ratio of hours billed to number of hours worked.

Olsen claims to be “proudly non-traditionalist”. If this has caused fights in the past, it appears to be working now. Olsen has one more saying, too: “Jet pilots don’t use rear mirrors.” While I am unable to confirm whether this is technically true, and would normally question the use of such abominable consultant-speak, it does seem to be a successful theory. And if nothing else, it proves that you can take the Californian out of California…
John Olson
Head of trademarks and brand protection group
Field Fisher