Trevor Little

Building an understanding and appreciation of trademarks across the corporate structure is a significant challenge for many corporate counsel. However, it isn’t an impossible mission and a number of this year’s WTR Awards winners have expanded on how the legal function in their organisation has been positioned as a meaningful business partner rather than remaining in a legal silo.

For truly brand-based businesses, efforts to enlist the support of senior management are arguably easier to approach – after all, if the brand is the root of a company’s value, the need to protect it becomes an easier sell. Failure to do so will have a critical impact on the bottom line. As Zeeger Vink, IP director at Maus Frères, contends: “Brand-driven companies like ours need to have a solid IP consciousness throughout the organisation.”

The Maus Frères team – which boasts a dozen IP professionals located in France, Switzerland, the United States and Brazil (with a Chinese presence imminent) – is therefore in the enviable position of having the brand function plugged into the wider company consciousness. However, it wasn’t always the case that the concept of ‘brand’ was fully embraced, Vink explains: “We have been working hard to make that a reality; where intellectual property was sometimes perceived as a mere technicality, we are now fully involved in, for example, branding, marketing, product design and merchandising.”

Going further, these efforts have led to brand protection now being formally entwined in the company’s DNA; for example, IP is specifically included in Lacoste’s code of conduct next to other elements of corporate social responsibility. Specifically, the brand’s partners and suppliers charter requires that those working in areas that constitute the brand’s visual identity (including branding, product design, advertising and corporate communications) “must obtain prior approval from the intellectual property department before any public divulgation”. It also formally requires employees, partners and suppliers to commit to the fight against counterfeiting by refusing any purchase/sale of counterfeit goods or to support in any other way illegal and damaging trade. Additionally, any unauthorised use of the brands, as well as any instances of illegal selling, is to be reported to the team via a dedicated email address.

This approach makes the IP team the central liaison point for all stakeholders, ensuring that intelligence is flowing into their hands and requiring cross-enterprise buy-in to brand protection. In many respects, this is the holy grail for corporate counsel – a situation where, rather than having to constantly seek support, this is a mandated requirement for employees and suppliers. However, where elevating brand protection to such a lofty position proves difficult, there are other ways to foster an understanding of trademarks amongst non-legal colleagues.

One is to create a voluntary cross-department task force – a strategy adopted at American International Group (AIG). IP director Elizabeth Pearce explains: “The IP taskforce is composed of people from many different aspects of AIG: the IP group, the litigation department, corporate communications, marketing, claims, various business units in property-casualty and life and – frankly – anyone else who expresses an interest. We seek to be inclusive rather than exclusive because a major part of our job is education.”

The taskforce meets monthly and discusses all aspects of IP at the company, “from trademarks to patents to social media”. Crucially, this approach has enabled the team to expand its internal support network and ensure that the wider business is a proactive partner in efforts to secure and protect the company’s intellectual property. It also enables the IP team to view challenges through the lens of other departments.

Of course, once again, the key is to obtain initial buy-in so that other business units are willing – or keen – to get involved in IP issues (or even just deepen their understanding of them). One way to achieve this is to meaningfully engage with colleagues when the opportunity inevitably arises. In the pharmaceutical industry, for example, the need to meet multiple regulatory and recordal requirements compels other stakeholders to engage with trademark teams. Novartis Pharma’s global head of trademarks and domain names, Myrtha Hurtado Rivas, notes that “recordals and assignments, as well as monitoring, has entailed close collaboration with our regulatory colleagues, as trademark registration details often need to be submitted with changes to the marketing authorisation”. Meanwhile, “with respect to product trademarks for innovative medicines, for instance, we get involved at a very early stage and work with our colleagues from the name creation function and the global project team.” This has created an environment in which different business groups have become used to working with their legal counterparts. The key, in such instances, is to then engage colleagues in a way that speaks to them, so that the door remains open going forward and the relationship is a co-operative one. In short, legal needs to speak their language.  

This is the approach adopted at Intel. Over the past year, the tech giant has announced a range of new artificial intelligence products and technologies, introduced new connected home offerings and taken the lead in virtual reality game tech. Director of trademarks and brands Christopher E George explains that close cooperation with cross-company stakeholders has therefore become a necessity for the group to keep abreast of upcoming executions and extensions, and to maintain brand integrity. “We have regular and direct contact with the different business units (BUs), so that we understand their objectives as well as the overall messaging/branding objectives. That allows us to support both the BUs and branding. Being brought in with the client/branding team as soon as possible to understand the product, the brand and the go to market strategy, so that we can craft a strategy that supports the business goals”.

Where the nature of the work brings trademark and business teams into each other’s orbits, then, the key is to build on this contact and be seen as facilitating the commercial success of other departments. In some instances there may even be an opportunity to be seen as a revenue generator. For example, Sky International’s Leone Kemp notes that the trademark team always adopts a business-oriented approach, looking for opportunities where others may see only threat. Thus, the team is encouraged to “think outside the box when it comes to dealing with trademark infringers – for example, identifying new business or trademark licensing opportunities”.

Of course, not every incident of infringement is a potential commercial opportunity. However, viewing legal duties through a business lens can go a long way towards positioning counsel as critical partners, rather than a roadblock to commercial success. Cultural shifts do not happen overnight but the first step is to think and talk ‘business’ not ‘legal’. 

Profiles of this year’s WTR Industry Awards winners are featured in the current edition of world Trademark Review, available to subscribers here

Strategies for communicating and presenting the trademark message is the focus discussion at this year’s Managing Trademark Assets, held in Chicago on October 17. For more information, visit the event website here

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