3 Aug
2020

“Become business partners” and “prepare for the long game”: six tips for stakeholder buy-in and resource management

Next month, WTR will be publishing its annual Global Leaders supplement, in which a select number of the trademark elite reflect on their professional journeys and offer insights and guidance into career development, practice management and trademark industry trends. 

In the first instalment of a series delving into this treasure trove of interviews, in-house thought leaders at AkzoNobel, Coty, Rotary International, Treasury Wine Estates and Verizon share their tips for engaging stakeholders at a time when proving the value of IP assets has never been more important and for deciding which matters to pursue under increasing budgetary pressures.

How to engage other functions and ensure buy-in from key players

1. Become collaborative business partners

It is important to build a good relationship with business people. I recommend that IP professionals become business partners and bring more to the client than just legal expertise. By understanding the other functions in the business and knowing more about your industries and markets, you perform better both as an IP professional and as a business adviser. You can then counsel the client in the context of the business issue.

Patrick Flaherty, senior managing associate general counsel at Verizon

2. Work closely with marketing (but acknowledge it is a two-way street)

We do a lot of training with our marketing and R&D teams, and we constantly update our processes and training decks. This is an important two-way street as marketing is the lifeblood of our product initiatives and we need to have early knowledge of new products coming down the road for trademark clearance purposes as well as potential design protections and occasionally patents. Our work also crosses over to marketing claims, so we need to understand what we are proposing to say about product claims to ensure that they have appropriate support. Of course, we also work closely with finance teams on a wide variety of issues relating to budget.

Joseph Conklin, senior vice president and global deputy general counsel at Coty Inc

3. Join forces with external services

There are many ways to do this. Conducting constant IP and brand protection awareness training internally with colleagues and externally with distributors and business partners can be effective. Market policing and recordal of trademarks with administrative authorities (ie, Customs and/or the marketing supervision administration) are other useful approaches. Last but not least, close cooperation with large e-commerce platforms (eg, Alibaba) and social media (eg, Wechat and Douyin) is indispensable to preventing counterfeits. IP functions and counsel must be agile and savvy to new business modules such as virtual businesses, which have changed the world entirely. We must work hand in hand with service providers such as investigation companies, online monitoring hubs and IP boutique firms.

Christy Qingtao Chen, senior IP counsel at AkzoNobel

How to fight infringement when budgets are finite

1. Prepare for the long haul

I am very lucky that the company I work for treats the protection of its IP rights as a top priority and that, given the value and heritage of its brands, it has taken a zero-tolerance approach to infringement. We therefore take action against infringers wherever possible, including in the copycat and counterfeit space. That said, we cannot pursue every target; we tend to prioritise these based on the materiality of their presence in the online or offline market, as well as how aggressively they are attempting to use and register conflicting rights. In terms of ensuring the ongoing allocation of resources for disputes, you should always be prepared for the long game in China and manage business expectations in this regard right from the start. It is also important that the leadership team clearly understands the importance of your objective and its long-term ability to materially contribute to the value of your brand, in order to ensure their ongoing support and commitment.

Anna Olsen, global director, intellectual property at Treasury Wine Estates

2. Consider alternative enforcement methods

From an enforcement standpoint, we are guided by a few considerations. Number one, regardless of cost, we need to protect the key trademarks of Coty and our licensors by ensuring that consumers are protected from buying counterfeits or infringing products. If there is a clear infringement, the budget issue is less relevant. That said, clear infringement cases are only part of the story. On the more subtle scale of infringement, we have had reasonable success with traditional enforcement methods such as cease and desist letters and online takedown initiatives. We also bring a lot of litigation, often in jurisdictions where costs tend to be lower and the process is quick as sometimes the reach of a ruling can have a pragmatic impact on a wider-reaching basis. For US litigation, we are apt to pursue a case where a positive precedent might shape the law in a positive direction for trademark owners and brands – especially in areas that are important to Coty and our licensors.

Joseph Conklin, senior vice president and global deputy general counsel at Coty Inc

3. Be mindful of spending

No matter what type of company you work for, managing money is important. While every company is conscious of how its money is spent, we are conscious at a different level because the money to run the administrative functions of the corporation comes largely from the dues of volunteers. Money not spent judiciously is money that could be spent doing good in the world. I also represent the Rotary Foundation, which is our charitable arm, so there is always an underlying thought that says this money could be better spent on polio vaccine, clean water and sanitation, literacy or any number of things. It makes you think differently about waste.

Jomarie B Fredericks, deputy general counsel and chief intellectual property counsel at Rotary International

 

WTR is polling law firm and corporate trademark professionals for their thoughts on how the trademark services sector is matching up to expectations. If you use search and watch, renewals and recordals, and general trademark portfolio management services, you can have your say on the market and the innovations you would like to see here, and below.

Victoria Arnold

Author | Senior Editor, IP Editorial

[email protected]

Victoria Arnold