Former leader at FIFA reveals reasons for recent move to Abion

This article was originally published on WTR.com, World Trademark Review, in April 2024.

Two former in-house leaders from AB InBev and FIFA talk to WTR about their recent moves to law firm practices – including what spurred such significant career changes, the challenges of such a move, and their advice for other corporate trademark leaders on making the transition to private practice.

• Former leaders at AB InBev and FIFA reveal reasons for recent career moves
• Both moved to private practice following years in in-house leadership
• They offer advice for other practitioners considering similar transitions

Making the leap from leading the trademark strategy of a corporate entity to joining a law firm is a significant career shift. Inhouse practitioners will be accustomed to the internal dynamics of a single organisation, so jumping to private practice will see them in a world of diverse clients and multifaceted legal issues. The transition offers a myriad of opportunities for growth and professional development, including the chance to expand expertise across various industry sectors and to work alongside a broader spectrum of legal professionals. However, it also presents its fair share of challenges – including adapting to the demands of a billable payment model, cultivating new client relationships, and acclimating to the often competitive law firm environment.

Talking to WTR this week, Daniel Zohny, formerly head of intellectual property at FIFA, and Fabio Riva, previously global director, legal and corporate affairs at AB InBev, reflect on their transition from corporate leadership to private practice. With years of experience shaping the brand identities at their previous organisations, they now find themselves embarked on a new chapter in their careers. Zohny recently joined law firm Abion as global head of online brand protection and Riva has headed to CMT ADV as a partner.

I was significantly influenced by Abion’s innovative hybrid model, which blends aspects of traditional law firms with legal service providers,” Zohny explains.

Why the move?

Zohny spent 13 years in-house, a decade of which was at FIFA. “I was open to exploring new avenues, whether that meant continuing in-house or shifting to private practice,” he reflects. His ultimate decision was to join the Swiss office at Abion, which describes itself as a “one-stop-shop platform that simplifies and centralises the management of trademarks, domain names and web security”.

The prospect of “building and leveraging relationships across various brands and sectors” was also appealing, Zohny says. As was “embracing a more entrepreneurial approach”, including “seeking out new business opportunities and driving growth in ways that are often less accessible in many in-house roles”.

Nonetheless, the move required a change in mindset. “For years, I convinced myself that returning to private practice was off the table,” he tells us. “This mindset likely stemmed from my last pre-in-house role at a traditional New York law firm during the 2009 financial crisis, where I found myself mired in state court construction litigation – not really where I wanted to be. However, it required a shift in perspective to realise how far I've come in my career and to see that private practice now offers innovative business models beyond conventional law firm settings and opportunities that are aligned with my interests and goals.”

Like Zohny, Riva found that there were cutting-edge law firms in the market that would allow him to use the knowledge he had garnered from his corporate experience in full. “I lived and learned a lot during my 15-year in-house cycle, from the local operations to more strategic global positions, including the leadership of the global IP department, and I had the opportunity to support from inside the transformation of a global business that was almost fully analogic to one that is now permeated by technology in every aspect,” he says. “I feel that many companies are less advanced in their transformational journeys,some struggling to build legal and IP practices that are able to reinvent themselves to support the business evolution at the required pace. Therefore, I saw an opportunity to take all those practical learnings to expand my contribution to more than a single client and more than a single sector.”

There will, of course, be aspects of their previous roles that they miss. For Zohny, that includes working on FIFA’s football tournaments, some of the biggest sporting events in the world. “I will miss the hands-on, decision-making experience of managing the on-the-ground brand protection programme of the FIFA World Cup tournaments,” he says.

“These moments,where years of preparation and project management converged, offered a unique opportunity to demonstrate the team's achievements to our stakeholders. More significantly, it was a chance to share a profoundly impactful journey with multidisciplinary colleagues from around the globe, experiencing firsthand the tangible results of our efforts – a scenario seldom experienced by external counsel. Of course, the challenge of spoiling ambush marketing attempts on the spot was also a lot of fun.”

Riva will also miss the satisfaction of brand protection work around events. “I have fond memories of projects like the FIFA World Cup, where my team and I used to work hard to support all the projects involving the Budweiser brand as an official global sponsor of the event,” he muses.

Overcoming new challenges

Naturally, any big career switch will come with challenges – often unforeseen. “[I needed to] think about how to position myself as an external counsel,” Riva states, “As an in-house counsel, I was normally praised for my problem-solving and project management skills, regardless of the specific subject area. In addition to my IP background, those were the skills that motivated my former company to select me to lead the global IP area, which at the time was facing several relevant issues.As an external counsel, being a problem-solver or being able to manage projects is still relevant, but you should also position yourself as an expert in at least one area. It took me a while to choose a path, but it is now clear that the interplay between IP and technology and its fast-evolving regulatory landscape is the ocean I will navigate in private practice.”.

Another catalyst for some practitioners moving from in-house to law firm positions has been the changing nature of the corporate trademark role.

“Over the past few years, the demand to do more with less has escalated for in-house teams,leading to a scenario where leaders often find themselves too busy with firefighting to dedicate adequate time to team leadership,” Zohny notes. “[This] did not drive my decision to leave the in-house world,” he adds. But it could play a part in the decisions of others.

Riva agrees that corporate brand protection roles have evolved significantly in recent years, spurred by the rapidly changing world. “In-house leaders must now develop interdisciplinary knowledge, including on politics, technology, finance and people management,” he reflects. “While I don’t think those changes motivated me to leave the in-house career, which continue to praise as a great path, being pushed to become a more complete professional certainly made me more confident to face new challenges, including to make the move to private practice.”.

Despite the daunting prospect of a major career change, Riva believes that a risk is often worth taking. “My first weeks inprivate practice have been really rewarding,” he says. For any corporate trademark leaders considering new challenges, headds: “Ultimately, we only live once, so we should not wait to take steps that we believe can bring us personal or professional fulfilment.”

Zohny shares this message. It is important for all practitioners, whether in corporate departments or at a law firm, to juggle personal commitments with challenging themselves, he says. “Always trust your instincts and pursue what feels right for you,” Zohny insists. “If an opportunity excites you, seize it. Unless security is your primary goal, avoid settling for a less stimulating environment or a company/brand that doesn’t fully resonate with your values.”

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