For mature businesses with extensive IP portfolios, having a clear and signposted IP strategy in place saves money because it means working to a coherent and consistent plan rather than having different departments moving in different directions.
As part of this, the IP strategy should map onto the business plan. This action adds value to the business because it provides a basis for confident and efficient strategic decisions. For some businesses, the IP strategy can also be shared with would-be investors and purchases to demonstrate the strength of the business and the corresponding IP portfolio.
There are a number of steps that can be taken to manage a large IP portfolio effectively. We have employed these to ensure that our clients protect their brands, secure growth and build value in the business.
Our two-part series will explore the issues to address and will consider the best practice. Our ‘Brandcheck’ product interrogates all these IP issues and creates an actionable list of next steps for the business to consider.
In this first part of the series, we focus on taking stock of which IP assets are in place and how they need to be protected and enforced.
Visibility – see what you’ve got
Portfolio of rights: Brand-led businesses will naturally own a large portfolio of trade marks but it can often be difficult to see the wood for the trees. By creating a visual overview of the trade marks, countries and classes for which there is pending and registered protection means that there is an easily referenced document that immediately identifies where there are gaps or where protection is duplicated. This ‘brand map’ should be a live document that is regularly updated and reflects the hierarchy of the most important brands and countries so that they appear at the top. Brands and countries can be ranked by turnover and/or growth potential. We have devised various bespoke ‘brand maps’ for our clients that are useful visual aids for board meetings and presentations and provide an immediate cue as to the breadth of protection.
Plug the gaps: Where there are gaps in protection, ensure that the necessary freedom-to-operate checks are conducted before using the trade mark in that territory and applications are filed. We explore this in more detail in Part 2.
Overview: There is also likely to be regular email traffic as the various trade marks make progress through the national offices. With regular scheduled meetings, the deadlines can be swept up in one go so that they are handled in a timely way rather than being dealt with piecemeal, on an ad hoc basis. We also provide our clients access to a live online portal of their rights that can be customised so that brands can be arranged by territory, product SKU and so on.
Ownership and control
New IP: The creation of new IP is a live and ongoing process, and by devising the right strategy, the business will ensure that valuable IP is captured and protected. Note that if a third party has been commissioned to create the brand logo or website content, for example, the copyright will be owned by the third party, so an assignment is needed to bring ownership back to the business. The same is true of design rights for new products and packaging. Therefore, have external consultants sign a contract before the work is commissioned, setting out that they will assign to the business any IP that is created. You will also need to monitor to ensure that those rights are actually assigned at the end of the project.
Corporate structure: If there are plans to change the corporate structure, does this mean that the IP ownership will also need to change? Do not forget to factor that into the costs and milestones of the associated project.
Business partners: Be clear on your ‘red lines’ when opening negotiations. There should be robust contracts with your business partners, including licensees, distributors and manufacturers – relationships will start positively but can change with time. Make sure contracts require the other party to acknowledge your trade mark rights and to agree not to misappropriate those rights by filing trade mark applications in their own name.
Online activity: An easily overlooked field is domain names and social media accounts. The business should ensure that domain name access details and social media logins are saved centrally so all is not lost if the responsible staff members change.
Monitor third parties: Keep your ear to the ground. That can mean setting up watch services, monitoring social media, engaging online monitoring platforms or relying on the business network of manufacturers, distributors and licensees.
Watch services: When it comes to enforcement, a watch service will ensure that you are alerted to potentially conflicting applications, and it can also serve as warning of an infringing product entering the market. You can also designate a watch to monitor key competitors. However, not all markets are equal, so refer to the ‘brand map’ to create clear protocols as to how hard to contest any given matter. For a core brand in a core market, you may not tolerate the registration or use of a similar mark, even if the owner’s commercial interests are in a different field. For a less significant brand in a lower income market, a simple specification amendment may suffice.
Copycats: Bigger brands are almost inevitably going to come across infringements, whether they are ‘accidental’ in nature by less sophisticated smaller entities, ‘me too’ products or directly and maliciously targeted. Prepare by putting a strategy in place ahead of time to address how each of these will be dealt with, including taking into account the importance of the brand, the territory and the particular product. The brand map is a useful tool in this regard. It can be a delicate balancing act between hard-line enforcement of your rights and knowing when to take a softer tone, given the risk of bad publicity in a ‘David versus Goliath’ scenario. Cease-and-desist letters should be sensitive to the particular scenario, and a ‘pro forma’ letter can leave you vulnerable to negative press attention.
Targeted action: If there is a particular market that is causing difficulties, then one option is to target a specific trade mark application or infringing use as an opportunity to have your hard-won reputation formally recognised at the relevant national office, such as the UKIPO, the EUIPO or court, as the case may be. This would strengthen your hand as a valuable precedent in future disputes.
Customs: Customs recordals will mean that suspicious goods are seized at the border. The business should call on its own network of manufacturers, distributors and licensees in this regard to identify the problem markets. We make sure that we develop relationships with specific Border Force officers wherever possible and offer to provide training to maximise the effective seizure of counterfeit products.
If you would like to discuss the above issues, or how else GJE can help you protect your intellectual property and brand, please find my contact details on my website profile here or contact us at firstname.lastname@example.org.