Mr Jonathan Foong is the Managing Director of That.Legal LLC, a boutique law firm specialising in Intellectual Property (“IP”). He mainly handles non-contentious matters, which comprise two main areas. First, he looks after the IP portfolios of numerous clients (both local and foreign) – some of whom have trade marks, registered designs and/or patents in over 100 countries. Apart from playing an advisory role, Jonathan is also involved in his clients’ filing and enforcement matters. Second, Jonathan oversees the trade mark, registered design and patent registrations done at That.Legal – whether on the instructions of their clients or those of their comprehensive network of foreign legal associates.
IP Portfolio Management
Jonathan is incredibly experienced with IP work, having worked in the field for more than 25 years. He has used all the knowledge he has garnered over the years to create a streamlined, efficient process to meet his clients’ needs. The process begins with a client providing instructions on a certain matter – this typically involves the registration of a trade mark (whether in Singapore or a foreign jurisdiction).
Having been apprised of the client’s needs, Jonathan and his team will conduct a trade mark search for similar marks in the relevant market/jurisdiction, in order “to create something like a road map of what’s available to be registered”. Following this step, Jonathan says that “[they will] assess if the brand is distinctive enough. So we ensure that it doesn’t mean anything in another language that could describe the goods or services.” Finally, Jonathan will craft a report to advise the client on the best way forward, be it neutralising prior trade marks that present an obstacle, or suggesting a co-existence agreement that would allow the trade marks to exist concurrently on the register (this is usually the advice given if the goods protected under the earlier mark are different from that of the clients in terms of target market, distribution channels, and more).
An Example of the Challenges faced in the IP industry
In recounting some of the matters that he has had to deal with in the past, Jonathan brings up the interesting subject of trade mark squatting. He says that “trade mark squatting used to be a problem when the world wasn’t so small… People used to take marks from one country and register them in another. They would then wait for these companies to expand to that country so they could hold the marks for ‘ransom’, i.e. relinquishing ownership of the marks for a certain sum of money. But now the world is smaller, so this happens less frequently.”
He recalls one particular case where his client’s domain name was taken up at the speed of lightning – “within one day of announcing the venture!” said Jonathan. “We had to fight quite hard to get it back for my client.”
One special characteristic of Jonathan is his interest in general knowledge and learning new things – and this makes him eminently suited for the practice in the field of IP. This constant urge to learn about the world and its workings is essential for lawyers in this field to acquire knowledge on novel issues or topics in this ever-changing scene. Jonathan succinctly summarises this: “[General knowledge] helps you understand your clients’ businesses better, because they come from all over. For example, industrial businesses such as hospitality, technology, finance, food and beverage, apparel businesses, media and merchandising, and niche businesses such as environment, pharmaceuticals and much more.”
This thirst for knowledge extends even to knowledge about the laws in other jurisdictions. “Another aspect is also learning about other countries’ IP laws. For example, having gone through numerous cases in China, I’m quite well versed in Chinese trade mark registration and dispute processes now. With the acquired knowledge, I can better add value to my client.”
Jonathan’s love of learning is also reflected in his personal life. He is a self-proclaimed bibliophile, usually reading up to 4 or 5 books simultaneously. The books usually span several topics. His current reads include a collection of short stories by David Sedaris, the latest book by Brene Brown, “Atlas of the Heart” and one on the food and wine of France. “I usually read books on history, food, travel and fiction” he shares.
In law school, Jonathan found the academic aspect to be extremely fulfilling, especially during his pursuit of his Master of Laws degree. “I got to do things that I couldn’t during my undergraduate days. For example, I chose Modern Legal History, and did a research paper on the evolution of the penitentiary system in England. During my time there, I also learnt about different legal systems such as European Union and Japanese Law.” Fittingly, he was also an avid player of Trivial Pursuit, a board game that requires players to answer trivia questions based on their general knowledge.
Law school was also where Jonathan first discovered his interest in IP law. “Strangely, I always knew. It resonated with me, and I had an underlying interest in it from the start.” Queen Mary University of London, where Jonathan studied, also had an established IP law department, which helped Jonathan concretise his inclination towards this area. “A lot of the groundbreaking academic work in IP and related lectures took place there at the time” Jonathan says.
The That.Legal Adventure
On venturing out and establishing That.Legal, Jonathan has had no regrets. “It was definitely a step out, but I felt like it was the right time. Mark and I had similar visions and a convergence of ideas.” Jonathan likened That.Legal a few years ago to David, in the famous biblical story David and Goliath. “Just like how David started out as a shepherd boy, we were very small and very new” said Jonathan as he reminisces about That.Legal’s humble beginnings. That said, That.Legal has grown from strength to strength and Jonathan is very pleased with its progress: “But now, I’m happy to say that we are quite established. Still fairly small but growing.”
When asked about his vision for the future of That.Legal, Jonathan expressed his wish to leave a legacy, by developing an IP firm that is well regarded, and to provide a place where aspiring IP lawyers can practice good work. “We will continue being at the forefront of IP legal developments. Of course, we will also continuously improve the way we do things here. We’re quite big on adopting processes that can improve our efficiency.”
Indeed, as the Chairperson of the Intellectual Property Practice Committee of the Law Society of Singapore, Jonathan truly remains “at the forefront” of IP developments in Singapore. He has been on the committee for over 20 years now and is currently in his fifth year of appointment as the Chairperson. “The legal fraternity for IP is not big, so it’s good to meet as a fraternity to discuss issues we have, and to meet with other stakeholders such as the Ministry of Law and the Intellectual Property Office of Singapore. We usually discuss matters with different stakeholders for IP enforcement issues, for example, holding dialogues with Singapore Customs and the Singapore Police Force with regard to infringement matters.”
Parting Words to Aspiring Lawyers
Jonathan offers a piece of advice to young lawyers and law students: Go into practice and give it a few years – it’s worth it. Even though it’s undoubtedly hard work, give the practice of law a chance.
As the interview comes to a close, tenacious is another adjective that can be used to describe Jonathan. With a love for intellectual challenges, he dislikes having a defeatist mindset and persists in having a never-say-die attitude. “That is the beauty of law, you think out of the box and try to find a solution.”
Link to Jonathan’s profile: https://www.that.legal/profile-jonathan
This article does not constitute legal advice or a legal opinion on any matter discussed and, accordingly, it should not be relied upon. It should not be regarded as a comprehensive statement of the law and practice in this area. If you require any advice or information, please speak to a practicing lawyer in your jurisdiction. No individual who is a member, partner, shareholder or consultant of, in or to any constituent part of Interstellar Group Pte. Ltd. accepts or assumes responsibility, or has any liability, to any person in respect of this article.