Improving diversity; managing the bullying narrative; wielding enforcement data – takeaways on trademark management
Senior in-house and law firm brand professionals convened in London this week for our latest Managing Trademark Assets Europe event. The day resulted in a stream of takeaways, spanning budget management, getting creative with internal communication, how to use anti-counterfeiting data, avoiding the bully label, Peppa Pig’s link to gangsta rap, and much more. Here we present a selection of highlights.
Money, money, money, it’s an in-house world
The first session of the event began with a discussion of different approaches to keeping the books balanced. Natasza Shilling, senior counsel, legal for Vodafone Group, explained how her company had changed strategy from using a single firm to instruct local external counsel on a global basis to instructing local attorneys directly in key territories. Not only is there a cost benefit, she observed, but direct interaction has also yielded more creative approaches from the local teams. Adding to that, Niall Trainor, senior director of brand protection at Entertainment One, revealed that his company’s proactive litigation strategy has ensured they bring in enough money from suits to offset the costs of portfolio management. Still, budgets are finite and as Entertainment One’s products are media properties that can spend a long time in production, sometimes it’s necessary to prioritise key jurisdictions for protection over others, and other times it requires not being too precious about a last-minute brand change. The key is to be cost-effective, nimble, and ensure you have the right external partners in place.
Software: is there a one-size-fits-all system out there?
Another way to introduce efficiencies into a trademark department is the use of technology and software systems. The panel’s discussion ranged between tailor-made systems that companies and firms develop together to the more traditional vendor systems. Entertainment One’s Trainor noted that, although they use a main software system through their portfolio partner, they’ve had to employ a separate one for dealing with specific jurisdictions like China – in large part to tackle the unique approach Chinese language infringers adopt. One tip for service providers was to widen offerings, with Vodafone Group’s Shilling stating that she would like to see more options for intelligently monitoring the way the company’s brands are used online, as well as how competitors are using similar marks. The key takeaway, though, is that there is likely not a ‘one-size-fits-all’ system that will cater to the needs of all brands. For instance, Trainor noted that automatic takedown software isn’t ideal for Entertainment One as it risks them taking down genuine fan interaction with the brand, potentially harming consumer feeling. Until AI develops the ability to make a nuanced judgement call on what infringement to clamp own on, and what brand use to let go, the human hand will remain important. The importance of human analysis was highlighted again later in the day by Victoria Baxter, senior counsel, IP at King. Like Entertainment One, an automatic takedown system is not always suitable as analysis is required of what to let go and sometimes technology will not find infringement. She observes: “Unfortunately some things we can’t find through keywords. We have a colleague whose job is to basically play games. When infringement is not obvious, she will play the game and make the call. She has incredible knowledge – she will play a game and spot something was copied from a game she saw five years ago. We can’t find any tools to replicate Sandra.”
Communicating the importance of IP to the company
With budget featuring prominently in the discussion of trademark management, inevitably the need to communicate IP issues and needs to senior management arose. At Sky, Corbett explained, this task has been eased by senior management buy-in to the importance of IP: with key members of the c-suite aware that the brand is Sky’s most valuable asset, it’s easier to communicate budget requirements. Nevertheless, he explained that understanding relationships and communicating to other departments based on their priorities remains crucial. Vodafone Group’s Shilling equally interacts as much as possible with creative stakeholders – being in the room for branding discussions before a potential mark is seen by a CEO is essential to avoiding difficult conversations later on. It can also allow you to flex your creative muscles and suggest brand names and ideas. Of course, she noted, you don’t want to be seen as just a blocker to good ideas, so it’s also valuable to work with teams to try and help find a way to secure the marks they are intent on if the risk level is tolerable. And when that’s not possible, she has found it useful to bring in external counsel to bolster the case for not running with a mark. A final tip from Shilling was to get creative. For instance, she uses podcasts and videos to communicate IP matters to stakeholders – thus they can listen in on the go, rather than have to wade through pages of legalese. Trainor’s team at Entertainment One has also taken a creative approach, developing an ‘IP guide for dummies’ that is circulated to explain the basics to other teams. Ultimately, other stakeholders will listen to the IP message. They just need to hear it in a format they are comfortable with.
When communicating brand protection efforts, data is key…
The need for effective communication also took centre stage in the session focused on anti-counterfeiting, with Robert Sterner, head of global brand protection at Audi, noting that in order to get buy-in to enforcement activities you need to show why it matters to the organisation. “I asked our team what we can tell people to explain why we are in the company. We focus on our strategy. For instance, we support the sales function by creating better conditions in the market. We also emphasise safety. It is also about protecting reputation of the brand and, finally, we go into details in terms of our relationships with suppliers and customers.” Data is also key in terms of highlighting the job the brand protection team does for the company: “It’s all about data. For instance, in China we have between 150-220 raid actions and collect data that we link together. What is interesting is that you can track the impact of your efforts on counterfeiters. They will change their tools and measures – and it they react it is a measure of success.”
Improving diversity in the trademark world
Despite excellent work by many firms to increase diversity in the legal profession, there’s still a long way to go. One challenge that can arise stems form the perception of the brand itself. Lia Young, senior corporate counsel for Caterpillar UK, noted that there is a pervasive image of the traditional CAT employee: a rugged six-foot five bloke with a can-do attitude and a wife and kids at home. The cliché, while amusing, can have a serious effect on the way that people from different backgrounds are attracted to roles. This is difficult to tackle, placing the onus on legal team hirers. The diversity discussion then turned to what companies and firms can do to actively create a more diverse and inclusive culture. Ensuring pay parity is an essential step said Myrtha Hurtado Rivas, head of global trademarks and domain names for Novartis International AG. At Novartis that has meant creating transparency over paygrades and what each band means so that people can see if they’re being under or overpaid relative to their position. However, Novartis is currently in the process of ditching these bands altogether in a bid for a more transparent system. The process has led to questioning the assumption that patent lawyers ought to be paid more due to their science background when trademark teams are equally as qualified as lawyers, the job they’re hired to do. Other methods of inclusion cited were the development of internal networks for women or other groups such as for LGBT+ colleagues. At Novartis, eight people have been hired as diversity and inclusion officers, with 800 more people acting as ambassadors in the company. The group has also seen the company undertake the Harvard Unconscious Biases test – something Hurtado recommends as essential for anyone to find out how they may be unfairly treating people without realising.
The breakout brand lessons
The final session of the day saw delegates break out into small discussion groups, each led by an expert moderator. At the end of the breakouts, each group leader presented some key takeaways:
- Social media and apps: tackling multiplatform counterfeiting – A common problem, noted Karlis Grinvalds, EMEA commercial sales director at Red Points, is the rise in the use of closed groups to peddle fake goods. The enforcement piece is relatively easy, but the difficult part is in covering where these groups are. It is a space worth monitoring, however, as infringers are increasingly turning to such groups in a bid to evade detection.
- When to call in the (private practice) lawyers – Much of the discussion in this group, recounted Bence Bozóki, counsel, IP, at Mars Wrigley, focused on how external lawyers should focus on the manner in which they communicate advice. For an in-house professional, the ability to pick up the phone for a quick opinion is critical and the best advice is simplified advice. He concluded: “The single most annoying thing in-housers experience? Long emails!”
- Should cease and desist be relatable and friendly or non-tolerant and stern? – David Llewellyn, head of trademarks at ARM, led the discussion on this hot topic. As for pointers, he noted that sometimes there can be a quicker win that sending a cease and desist (observing: “There is something called the telephone”) but where a more formal approach is required, to know what you are trying to achieve and pitch the tone accordingly. Finally, if worried about how the letter could play if it went viral, ask a simple question – ‘How would this look in the Daily Mail?'
- David versus Goliath: managing the narrative – As with cease and desist letters, tone is critical, with Chris McLeod, partner at Elkington and Fife, noting: “You have to know your audience. For instance, if writing to a sole trader don’t bamboozle with lots of subsections from trademark acts or delve into the finer points of the Jif lemon case. Just make sure the correspondence is clear in terms of what is your objective and what you would like other party to do”. And consider the potential for social media: “These stories have ashort shelf life but if someone high up in the company reads a negative story you, as source of letter, will be the one hearing all about it.”
The quote of the day
Entertainment One, which was recently acquired by Hasbro, manages a variety of market-leading brands, despite being best known for a particular suidae character: Peppa Pig. Niall Trainor, senior director of brand protection at Entertainment One, gave insight into the sheer variety of properties the company is involved with, from PJ Masks and The Walking Dead to Oscar frontrunner 1917 to Death Row Records. The latter led him to quip: “So as you can see, we represent gangsta rappers as well as Peppa Pig”.
The next Managing Trademark Assets event takes place on 3 March in Chicago, a day before we host Brand Protection Online USA in the windy city. The back-to-back events will provide an opportunity for attendees to learn best practice and insight from leading in-house counsel from the world’s biggest brands as they discuss their approaches to critical areas, as well as share their own insights with peers and colleagues. To sign up to attend Managing Trademark Assets USA, click here, and to sign up to attend Brand Protection Online USA, click here.