While every business is different, certain recommendations apply to the proactive management of a trademark portfolio no matter your industry or business goals. We set out a 10-point strategic plan for streamlining operations in 2020.
1. Make sure you’re protected
It might sound obvious but, in the rush to market, businesses often ‘forget’ to put trademark registrations in place before launching products and services in their chosen markets. Undertaking a trademark audit will help to map your rights against your business strategy, identifying brand assets that are yet to be protected, including logos, slogans/taglines, multimedia, shapes, colours and even sounds. It will also identify geographical gaps in protection and rights that have been registered, but are not being used. Download our trademark auditing white paper for more.
2. Prioritise your activities – and budget
Not all trademarks are created equal; therefore, not all trademarks require the same level of investment. By dividing a portfolio into ‘core’ and ‘non-core’ rights, for example, brand owners can focus their budget on ensuring their most valuable trademark assets are secured. Novagraaf’s commercially-focused trademark audit methodology includes a revenue-to-trademark analysis, to drive informed filing decisions and greater certainty on where to spend precious budget. We can also help you to prioritise rights based on the strength of a registration and what it offers the business in terms of future market expansion.
3. Take the broader IP view
Trademark rights don’t exist in a vacuum, and yet IP still tends to sit in silos within organisations, with trademarks even managed separately from related assets, even domain names. Having the right IP management system and processes in place plays a key role in mapping IP and related assets to products, services and market activities. As important is working with an IP adviser who can help you develop and apply an IP strategy that supports your wider business goals. Download our white paper on best practices in trademark management for more.
4. Get the right support
Companies need to bring together the right mix of external legal service and formality providers if they are to provide efficient solutions in light of the resources they have in-house and their overall business goals. Identifying which is the best solution for your business (e.g. fully in-house, fully outsourced, hybrid) is not a one-off exercise. The preferred model may evolve over time, as a company grows or expands into new markets. Likewise, a model that works today may no longer meet in-house department needs as their company evolves or expands into new markets and geographies.
5. Use IP systems to your advantage
Depending on your chosen markets, there are a number of cost-saving and confidentiality tips and tricks to consider when putting trademark rights in place. For example, starting with a Madrid Agreement (as opposed to Protocol) country can help to reduce fees for international applications, while filing first applications in a more ‘discreet’ or ‘easy’ country of origin can help to keep a filing project/campaign confidential. Choosing a basic country where examination on absolute/relative grounds is more/less strict can also be a tool in your protection strategy. Download our white paper on best practices in trademark management for more.
6. Monitor your assets
Of course, registration is only the first step in the effective use and protection of a chosen brand, company or product name. In order to ensure that valuable marks are fully protected and enforced, companies should also consider implementing post-registration best practices, such as trademark watching, anti-counterfeiting and online brand protection. Monitoring programmes are crucial to identifying potential infringements and acting promptly against them.
7. Create a response plan
To be effective, monitoring programmes need to be accompanied by an action plan for responding to infringement. Early detection is important if you are to file oppositions promptly, and when it comes to identifying and acting against infringement. These days that means covering both online channels, including social media, and offline channels, including liaising with local agents, police and customs authorities in key jurisdictions. The enforcement activity and budget needs to be proportionate to the threat, so concentrate budget and activities on mapping the biggest threats and most common channels. Download our anti-counterfeiting white paper for more.
8. Keep on top of admin
Post-registration best practice should also include instating healthy internal docketing habits to ensure rights are kept up-to-date and evidence of use is captured, helping to avoid actions for cancellation of rights. Putting the right processes and IP management systems in place will also help when it comes to large docketing projects or merger and acquisition activities, as well as delivering peace of mind that your valuable IP rights are secure and enforceable.
9. Prepare for future challenges
While it is important to identify, protect and enforce the IP rights that already exist in your business, it’s just as crucial to identify those rights that will become important in the future. Non-traditional trademarks are a good example of this, as even traditional businesses begin to call on once unusual forms of branding, such as multimedia, colours, smells and jingles, to differentiate themselves from their competitors. As important is preparing strategies for key geographies, such as China, the US and Europe.
10. Don’t get Brexit complacent
The date of Britain’s exit from the EU is set at 31 January 2020 and businesses should prepare accordingly. Knowing which of your rights are likely to be affected is the crucial first step to putting a strategy in place to ensure your rights aren’t affected once Brexit is complete. For a handy overview of actions to take both pre- and post-Brexit to protect your rights, download our list of Brexit and IP action points.
Taking the time now to consider the points above will help to get your IP strategy in good shape for the year ahead. If it seems too much to resolve in one go on on your own, please speak to our team for additional help prioritising and/or breaking the work down into manageable projects.
Get in touch below for additional or specific guidance or support on any of the topics covered in this article.