Trade Marks, Part V: Best practice for portfolio management.
Trade mark portfolios require regular review to ensure alignment with company strategy and adequate brand protection. At a high level, companies should regularly ask the following questions to help identify gaps and/or vulnerabilities in their current portfolios:
Have registered trade marks been genuinely and reasonably used in the last few years? If so, have they been used for all the goods and/or services which are listed in the registrations?
Can the company demonstrate that the trade marks have been used in all of the countries in which they are registered (i.e. does the company have sales information for the goods and/or services which are provided under the trade marks)?
Is the company using or does it intend to use the trade marks for any goods and/or services which aren’t currently listed in the registrations?
Do the trade mark registrations represent the company’s current branding or have modifications/changes been made since the trade marks were registered?
Are the trade marks being used by their registered proprietors? If not, do you have written trade mark licences in place?
Are any of the company’s trade marks being used, or might be used in the future, in a country or countries where they are not yet registered or applied for?
Are any trade mark registrations due to expire (noting that most trade mark registrations last for a period of 10 years)?
In addition to the above, companies should also:
Ensure that their creative/product teams have a basic understanding of what trade marks are and why they are important. Through education, companies can rely on employees to identify potential trade marks before brands/products go to market so that the appropriate protection can be sought ahead of launch. By having an understanding of the rights afforded by trade marks (both registered and unregistered), employees can also help to identify and prevent third-party trade mark infringement.
Invest in a trade mark watch service. Trade mark watch services help to monitor third party activity when it comes to the use of your trade mark or something confusingly similar, enabling companies to take appropriate and timely action to counter trade mark infringement.
How regularly companies should review their trade mark portfolios will depend on several factors such as the size of the portfolio, changes to the company’s structure and scale of growth. For companies with larger portfolios and aggressive growth plans, every 6-12 months is recommended.
Top Tip: Managing an international trade mark portfolio that ensures both brand protection and enables growth is not an easy task and there can be severe implications if you fail to get it right. Engage an IP professional to assist with your portfolio review to ensure that you are able to grow and protect your brand in the best and most cost-effective way.
Disclaimer: Re-think Legal is a boutique legal consultancy providing businesses with legal support. The information contained in this blog is simplified and must not be taken as a definitive statement of either the law or practice of any given jurisdiction and does not constitute legal advice.
