1 Jul
2017

Technology & Consumer Electronics Team of the Year: Western Digital

L-R: Iain Stewart (Kilburn & Strode), Anna Cadywould (Western Digital), Suchi Somasekar (Western Digital), Cynthia Tregillis (Western Digital), Carrollanne Lindley (Kilburn & Strode)

In May 2016 Western Digital completed a reported $19 billion acquisition of flash memory manufacturer SanDisk. While the deal was grabbing media headlines, the trademark team embarked on a significant integration project, as Cynthia Lock Tregillis, vice president, global brand protection and trademarks, explains: “It was certainly a busy year for Western Digital, as we brought together the legal teams for our three legacy companies – SanDisk, Western Digital and HGST. We have spent the last several months integrating these legal teams, hiring new team members and consolidating our systems and tools for our trademark portfolios and enforcement programmes. Merging the portfolios of three companies is a time-consuming process, but necessary to allow us to optimise our resources and stay highly efficient. On the enforcement side, we have also been finding ways to enforce our multiple brands by reallocating existing resources to cover multiple brands.”

The team – which manages a portfolio of over 6,400 pending and registered trademarks in over 200 jurisdictions – comprises eight trademark and brand enforcement specialists based in California and Shanghai, with a mix of paralegals and attorneys in each location. In addition to reviewing internal processes, its brand protection endeavours continued unabated through 2016, with the online world a key focus. Tregillis notes: “Our strategies are evolving as the channels of sales for our products develop. The shift to online sales has meant that we spend more time monitoring online platforms. As with most brands, we also are keeping an eye on social media platforms – particularly as they evolve to become sales vehicles. Closed or private social media stores make enforcement more challenging, which means we need to be much more aligned with the platforms to work together to find solutions to identify and take down infringers.”

To respond to the challenge, a personal approach is favoured, involving close cooperation with intermediaries and platforms: “We meet in person with key stakeholders at the intermediaries rather than depend on outside counsel or agents. Having personal interactions with intermediaries demonstrates Western Digital’s commitment to brand protection and our willingness to cooperate with intermediaries to find solutions that are acceptable to both parties. In my opinion, this approach has reduced the number of issues that we had with intermediaries – particularly the online platforms. That said, there is still room for improvement and we are continuing to seek opportunities to work with intermediaries to improve the takedown process and to implement proactive solutions to prevent infringers from being able to list infringing or counterfeit products.”

This hands-on approach extends to other anti-counterfeiting endeavours, meaning that the team must closely monitor markets in collaboration with peers and partners. Tregillis expands: “Our regional and local teams are our best sources of information on what is happening in their markets. Based on their feedback, we make sure that we have good local counsel and investigators in place, and that we have a solid understanding of what types of enforcement mechanisms are available and the likelihood of success for each of them. Talking with other brand owners is also key to making sure that we continue to stay ahead of local issues.”

For Tregillis, effective collaboration is one of the key factors to success in enforcement efforts, whether with “solid outside counsel who are passionate about protecting your trademarks and brands and truly understand the company’s business” or senior management support. She observes: “We are fortunate to be at a company that is willing to invest in a strong trademark and brand protection programme and that appreciates the work that we do.” Other important elements include adequate resourcing and client education. She concludes: “Ultimately, we have found that our employees, customers and fans are the best resources and have the most enthusiasm in protecting the company’s trademark assets.”

Other nominees:

Apple

Honeywell International

OSN

UL