Q&A: Kevin Mutch, IP Consultant

11 Mar 2019 , 11:47am

Kevin Mutch, former Group Legal Director at fine jewellery brand Faberge, ex-croupier, Harley Davidson enthusiast and currently IP consultant, tells us about his experience in bringing a heritage brand back to life, and what he sees as looming issues for the legal profession in the luxury sector.

False start

Kevin began his luxury legal career with somewhat of a false start. “I armed myself with a science degree and a teaching qualification but it didn't take long for the desire to teach to become well and truly squeezed out of me,” he says. Leaving New Zealand in his early 20s, Kevin travelled around the USA, Asia and Europe and found himself by age 30 working as a croupier. “I realised this wasn’t going to be my chosen career, so I spent some time thinking about what I could do as an intelligent but dis-satisfied thirty-something. I chose law because it seemed to offer something that could grow with me and offered a variety of disciplines. I knew even then that I wouldn’t be sticking to one discipline for my whole working life.”

Appeal of luxury law

His entry into luxury law was serendipitous, then, rather than planned, but the appeal of staying in the sector lay in working for famous brands and “being part of an industry that breathes life into dreams, and that generally, not only strives for excellence but achieves it.”

Luxury Law Alliance: What are the most relevant IP issues facing the luxury market currently?

Kevin Mutch: Well, the same hoary old threats of counterfeits and infringements and sustainability are still in the list but the increasing importance of the online experience in both sales and marketing must be at or near the top of everyone’s top five issues.

I think social media is a big issue too because potentially it can have such an influence on the fortunes of a brand and I think there is a need for much tighter control over comments posted on social media. Greater responsibility needs to be taken for them, underpinned by legal liability, whether the comments be positive or negative. Consumers can be ripped off by fake news just as brands can be.

There are some interesting decisions coming out now in European courts on Exclusive Distribution Agreements, especially for online sales, and that is an issue worth watching.

LLA: As a consultant to both law firms and brands, what do you see as the most pressing obstacles and opportunities for luxury companies generally? What trends do you see emerging?

KM: The biggest obstacles for existing luxury brands are:

  • new entrants to the market;
  • the unpredictability of the market; and
  • threats to reputation, for example celebrities seem to be disgracing themselves with greater regularity, even from the grave, and one wonders what new production scandals are brewing away unseen.

The biggest opportunities for luxury brands are:

  • developing new customers - young people and women are the growing segments;
  • online sales and marketing - as technology develops this opportunity will grow;
  • cheaper and quicker manufacturing processes in non-traditional centres; and
  • the growth of experiences over goods in the luxury industry - more investment opportunities in holidays, travel, dining, hotels.

LLA: Over the time you have been working in IP and trademarks, how have the issues shifted?

KM: The biggest changes I think have been the growth in the online space and the growth of China as a luxury market. Who would have predicted that 20 years ago? In the olden days, celebrities didn’t tend to go off-piste, or at least they weren’t often caught. Also, accidents in the production process in those days were more likely to be seen as just that, accidents, rather than unjustified exploitation of the environment or employee rights.

LLA: What do luxury brands most need in outside counsel?

KM: Generally, legal expertise is what I would want most in outside counsel. But please, it would be refreshing to see law firms say less about their commercial expertise because there are few lawyers in law firms who have better commercial acumen than senior in-house counsel, and it’s annoying to see them bigging themselves up all the time!

But luxury brands also need expertise in-house. A good in-house lawyer who knows the legal issues is much better able to instruct outside counsel, and get much better value from outside counsel.

Smaller brands and businesses probably don’t have in-house counsel and may not even be in a position to know what a good external advisor looks like. It’s important for external lawyers to be able to recognise this because if you don’t understand what your client wants, you can’t deliver it, and if things go wrong, it will be external counsel who get blamed.

LLA: While working with Faberge, you had first-hand experience in reviving and growing a heritage brand. What advice would you give other luxury lawyers involved in the guardianship of iconic companies?

KM: First and foremost, you have to understand the heritage just as well as the marketing and creative teams understand it. And you have to understand the marketing strategy. You have to understand what makes the brand unique, and why and where and how it is going to be marketed. Then you need to be able to apply the relevant law relating to protecting your particular brand. For example, Carl Fabergé was an historic figure. Anyone is entitled to say their jewellery or ornaments are inspired by or are copies of works by Carl Fabergé (if it’s true). But as the brand owner, we wanted to restrict the use other manufacturers made of the word FABERGÉ as much as we lawfully could. So you look for ways to do that, for example by ring fencing the word with similar trademark registrations so others think twice before they use FABERGÉ in combination with other words, and ideally don’t use it at all.