12 Sep
2018

Eight tips for managing a global brand trademark portfolio

CompuMark

If there is one thing more challenging than running a business, it is running a business that has a global presence. Whether that presence consists of just a handful of countries or an extensive operation spanning all five continents, the decision to branch out onto foreign soil can present a range of additional considerations.

One of the most important considerations is how the brand’s trademark portfolio is managed. A successful global brand will typically have hundreds of different trademarks registered across multiple continents, all of which must be properly looked after if the wider business is to remain sufficiently protected.

Perhaps unsurprisingly, there are numerous challenges that all brands face when it comes to managing such an extensive portfolio of assets – but that is not to say that it cannot be done. It simply requires a different, more focused approach when compared to the steps involved in managing a single-territory portfolio.

Having to adopt this new approach might seem like an overwhelming task – after all, there are so many other things to think about when running a business – but by taking the eight steps below, the journey towards global success can be made considerably easier.

Understand trademark needs from the beginning

While this might sound self-explanatory, it is incredibly important to have an innate understanding of a brand’s trademark needs from the earliest possible opportunity. If, for example, your business is just about to launch a new product, the relevant trademark professionals should identify when it is being launched and in what countries so that the trademarks can be filed in the right territories with enough time.

It is also imperative for all those dealing with trademarks to have a strong understanding of the wider business, as effective trademarks require strict levels of specificity. If the products and services are not properly maintained, the trademark may not cover the correct class or may not be filed in a certain country.

With this in mind, it can also be valuable to take a long-term outlook when it comes to trademarks. Take as an example a fast-growing business that is currently selling products only in the United Kingdom, but is looking to expand into another five countries in the next two years. Instead of individually filing the trademarks for the other countries when necessary, it would make more sense to file for a single international trademark covering all of those countries. This is cheaper, more efficient and saves the leading trademark practitioner a huge amount of time.

Have a trademark strategy in place

Once a brand has an implicit understanding of its trademark needs, it should set them out clearly in the form of a trademark strategy. This should distinctly outline the wider goals of a brand’s trademark efforts and detail the more specific goals regarding which products or services need protection and where.

A strategy can also help to set trademark priorities, as most businesses are never going to be able to trademark everything that they do. If, for example, a brand is operating in a certain country but selling only £15,000 worth of goods, it is far less important to file trademarks in that country over another territory in which sales figures are much stronger. Typically, brands will divide up their trademark needs into primary and secondary categories – must haves and would likes – and go from there.

It is also always worth including a section in the strategy dedicated to trademark searching and watching. This is vital when it comes to securing and protecting intellectual property – searching before filing an application and watching for potentially infringing applications once a mark is registered are valuable insurance policies which help protect against expensive mistakes.

Do not forget social media and domain names

The digital environment is where many brands now prove their worth. Whether it is driving customers to purchase through their own e-commerce store or establishing a strong personality and tone of voice through social media, the Internet has opened up countless avenues of opportunity.

Despite this, many brands still fail to factor social media platforms and domain names into their trademark efforts, and as a result they often face unexpected obstacles further down the line. The likes of social media usernames and handles must be protected through trademarks to maintain brand consistency, and domain names must be assessed before going ahead with any online activity. If you are about to launch a new company but suddenly realise that the domain name you wanted is unavailable, your plans are unlikely to get any further off the ground.

Monitoring the use of your brands online can also prove vital in preventing negative sentiment caused by counterfeiting and false representation. It costs nothing for a nefarious individual to set up a social media account with your brand’s name and logo attached to it, and unless you are actively looking at these digital channels you could be oblivious to the harm being caused to your business.

Build a trusted agent network

Filing and managing trademarks across a number of countries can be a logistical and technical nightmare. Different countries have different sets of rules and regulations – not to mention language challenges – and it can be nigh on impossible to grasp all of these without the help of those that are native to each country.

This is why all brands should have a trusted network of global agents if they are to achieve effective global trademark portfolio management. While it might continue to surprise those outside the industry, the world of trademarks is centred around the power of relationships, and so building strong connections with individuals who understand the laws, practices and nuances of the countries and territories in which you operate can put you at a huge advantage when compared to competitors which struggle through alone. 

Conduct an annual portfolio review

Over time, trademark records become out of date and brands are left with dead wood. Perhaps three years ago you decided to file a trademark that you thought you might need in a certain country but then never ended up using, or maybe you decided to replace your old supplier with a new one located in a different continent. There are countless business factors that could have a knock-on effect on trademarks.

Ignoring these unnecessary trademarks and letting your portfolio gather dust will lead to severe headaches. Conducting an annual portfolio review, on the other hand, allows brands to remove all the trademarks that they no longer need while updating and renewing the ones that they do.

Essentially, the portfolio review can be boiled down to two questions:

  • What trademarks do our brands currently have in place?
  • What do we need to have in place for the next 12 months?

You can then assess how these two answers compare and act accordingly.

Again, trademark searching and watching should also factor into these annual portfolio reviews, as it can prove pivotal in securing and maintaining each mark in the first place. Keeping one eye on the areas that need the most attention and ensuring that you still have proper protection in place for the upcoming year will reap rewards in the long run.

These portfolio reviews should take place internally and ideally involve individuals from various business departments, including marketing, legal and product managers (who are usually the brand ‘owners’). Through inter-departmental collaboration, everyone can contribute their thoughts and ideas towards wider trademark efforts.

Stay on top of trademark renewals

Approximately half of all trademarks fail to be renewed, the primary reason being that many businesses simply do not last long enough to continually renew their trademarks. However, there are always businesses that simply fail to renew the marks they are so reliant on due to a lack of organisation or proactivity. The last thing you want to do is lose your trademark rights in the United States simply because you forgot to pay the bill on time.

Generally, businesses should look at their trademark renewals annually, ideally at the beginning of the year. It can even be factored into a brand’s portfolio review or put aside as a task for the trademark owners. The process should involve considering which marks are soon to expire and then identifying the importance of renewing each one before going any further. Is it a key product that you are still selling? Is it a defensive mark that is struggling to prove effective? Ask yourself such questions before going any further.

From this point it gets easier. Renewing trademarks is a surprisingly straightforward task and can generally be done up to six months in advance of the mark expiring, but a proactive approach is essential to preventing disappointment further down the line.

Understand your budget

As with any aspect of running a business, success will always ultimately be determined by how the budget has been managed – money needs to be spent in a cost-effective manner. The last thing you want to do is discover that you have run out of money halfway through the year, which will inevitably lead to having to plead with the board for additional budget.

Staying on top of your budget involves a combination of what we have already discussed. You need to undergo regular audits, conduct annual reviews of your portfolio and ensure all trademarks are renewed in good time. Once this has all been confirmed, it can be costed out to provide an accurate indicator of the required budget.

Of course, staying on top of budget helps to avoid any potential upsets later in the year, but mapping out all the costs can also help to educate the wider business about the exact resources required to effectively manage a trademark portfolio. The better the level of understanding within the business regarding costs, the easier it will be to secure the budget required in the future.

Despite the fact that the cost of trademarking has remained relatively stable for several years – in fact, in some countries the cost of filing has actually decreased – this does not mean that the budget required should also stay the same. It is important to factor in all legal costs that are required throughout the process (including consulting with local jurisdiction experts) as these continue to increase over time.

Consider professional and trade bodies

Getting to grips with the different trademark rules and regulations in each of the countries in which you operate can be an incredible challenge for any brand. While some territories might be fairly straightforward, others can be more complex than at first envisioned.

Thankfully, there are professional bodies and government agencies that can help. The likes of the International Trademark Association (INTA), the World Intellectual Property Organisation and the Chartered Institute of Trademark Attorneys are great resources for any global brand. Not only can they help with organising and setting up contacts in certain territories, but they are also hugely helpful for gaining knowledge around local IP issues and staying up to date with any changes in the law.

Being a part of these bodies can also lead to valuable networking events. INTA, for example, hosts an annual conference that sees over 20,000 trademark attorneys flying in to attend from all over the world. This essentially means that you can liaise with attorneys from a huge range of territories in one place, without having to visit each one individually.

IP offices in many countries also have useful and easy-to-understand information on their websites to assist brand owners.

Comment

Trademarks are arguably more important than ever before, both in offline and online environments. As competition grows fiercer and the marketplace becomes more saturated, they are vital for protecting intellectual property and maintaining brand consistency.

To those operating globally, trademarks are even more important, but juggling a portfolio that covers multiple territories can be extremely challenging. However, if brands follow the tips set out above, they will see marked improvements and more positive results.

CompuMark

CompuMark

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London SE1 8EZ

United Kingdom

Tel+44 20 3564 5888

Web www.compumark.com

Robert Reading

Robert Reading
Director, custom and managed solutions
[email protected]

Robert Reading is director of custom and managed solutions at CompuMark in London. Originally from Australia, he studied mathematics and physics at the University of Sydney and was national product manager for a scientific and medical equipment supplier for seven years before moving to the United Kingdom in 1999 and discovering the hidden world of trademarks. Mr Reading worked for a leading UK IP firm for 15 years, managing large IP projects and as part of the team that built and maintained the in-house trademark record management system.

Mr Reading joined CompuMark in 2015 and manages a team based in the United States and Europe that delivers bespoke trademark-related services to clients, with particular emphasis on record validation, gap and protection analysis, as well as global search and portfolio management projects.