Legal tech, noun: the use of technology and software to provide, support, improve or disrupt legal services. So what? Well, what you probably thought was a generic term to describe this growing industry is actually a trademark registered in the USA and EU, which could prevent any individual or company from using the term to describe their business activities.
And this isn’t a far-fetched or unlikely scenario. In fact, legal technology companies are already being targeted with allegations of trademark infringement relating to their use of the term “legal tech”, with one such example being the LegalTech North Conference team based in Sheffield, who recently received a cease and desist letter whilst they were busy promoting the first legal technology conference to be held in the North of England.
This presents a challenge for the legal technology industry. At a time when the finance industry has readily adopted “fintech” as a term for all kinds of innovation and development, it seems remarkable that the equivalent term for technology in the legal marketplace remains subject, at least on the face of it, to protection as a registered trademark. What should be a standard beneath which technology companies can march together has instead become a sword with which those same companies can be attacked.
The difference between the approach taken to the two terms is stark, and inexplicable. Indeed, as Harvey Harding, a co-organiser of the LegalTech North Conference, noted, “”Legal tech” is widely used as a term by anyone doing anything in the legal technology space. In the same way that Fintech has now entered the Merriam-Webster dictionary, “legal tech” won’t be far behind it.” For the time being, however, the risk is real that anyone engaged in “legal tech” could find themselves on the receiving end of a letter threatening court proceedings.
Matthew Pennington, a fellow co-organiser of the LegalTech North Conference, commented that, “There are over 30 events using the term “legaltech” in their titles taking place just this year, there are thousands of event tweets using “#legaltech”, as well as Twitter accounts, LinkedIn page, companies and a new book all with “legal tech” in their name. The idea that the use of the word “legal tech” can be protected, and any attempts to enforce that trademark are ridiculous”.
The trademark is an anachronism. It was registered in 1997 at a time when “legal tech”, as it is now, was beyond the imagination of even the most ambitious tech gurus. It is, however, still registered in the USA and the EU, having been re-registered as a recently as last year, so still subject to protection against its use by anyone other than its proprietor in the two intellectual property jurisdictions most concerned with legal technology development. Many will feel that the protection is no longer required, or appropriate.
Ciaran Dearden, an Associate Solicitor at law firm Freeths, who represent LTN, observed that, “The proprietor of a trademark has to be proactive in protecting its intellectual property, and that simply hasn’t happened here. In this instance, the proprietor has allowed “legal tech” to become a generic term for the use of technology in the legal sector and, in doing so, has undermined the basis for the mark’s protection in relation to the proprietor's services such that the trademark should be cancelled.”
Having been faced with the prospect of legal proceedings, Matthew Pennington and Harvey Harding are now pushing for the trademark to be revoked in order to open up the use of “legal tech” to all without the threat of court proceedings, damages and huge legal bills. Matthew Pennington has asked any other legal technology companies who have faced similar threats, or indeed any companies who have a vested interest in opening up use of the term, to contact him with a view to supporting his application to cancel the trademark in the EU and, possibly, the USA also.
As Ciaran Dearden notes, “The existence of this trademark is really restrictive for a booming legal technology sector. When “fintech” is in the dictionary, but “legal tech” is a registered trademark, there is clearly a problem. In our view, “legal tech” should be a term open to all to use to describe what is a transformative movement in the legal sector”.
LegalTech North are crowdfunding to enable them to open up #LegalTechForAll, with the legal support of Freeths LLP. If you believe that the term “legal tech” should be free to use without restriction or the risk of having to defend legal proceedings, please support our Crowdfunding campaign.
Petition to Crowdfunding Campaign: https://www.gofundme.com/legaltechforall
The existence of this trademark is really restrictive for a booming legal technology sector. When “fintech” is in the dictionary, but “legal tech” is a registered trademark, there is clearly a problem. In our view, “legal tech” should be a term open to all to use to describe what is a transformative movement in the legal sector.