Corporate approaches to IP management have varied considerably over the years, driven in part by changes to business structures and practices, as well as to stakeholder understanding of the role and value of intangible assets. While I could lead you through a long list of recommendations, of ‘do’s’ and ‘don’ts’, and of lessons learned over this time, it is arguably more valuable to look forward: to take a look at how businesses operate today and the challenges they are likely to face in the future.
We are living at a time in which wealth is driven by IP rights rather than tangible goods. Indeed, in its recent study, ‘Intangible capital in global value chains’, WIPO estimates that more than a third of the value of manufactured products sold around the world comes from ‘intangible capital’, such as branding, design and technology. This is twice the value of tangible capital, such as buildings and machinery, underscoring the growing role of IP in the world’s economy. Clearly, if a business wishes to thrive, locally or globally, it needs to identify, protect and export its IP.
Building a trademark strategy to support your goals
To develop a trademark management programme that is not only fit-for-purpose, but also fit-for-the-future, the following basic requirements first need to be met:
- Business alignment Firstly, there must be alignment with the business, and this requires stakeholders to:
- Define goals in terms both of corporate identity and product development, so that the IP strategy is, as closely as possible, in line with the company’s business plan over the coming 5-7 years
- Set priorities in terms of the material and geographical scope of anticipated business development, such as defining a top 20 of countries of interest for key brands, as well as towards competitors and their IP strategies
- Assign adequate budget
- Endorse the strategy throughout the business (the so-called ‘top-down’ approach)
- Product alignment, namely:
- Alignment with the marketing and communication team on branding elements
- Prioritisation of activity in terms of product campaigns
- Trademark protection that supports the geographic scope/market for each product
- Trademark protection that supports the evolution of the product over time
Trademark protection is unlimited in time and not subject to secrecy. Take the time you need to define a phased-out protection strategy and registration programme.
Don’t lose sight of the other ‘soft IP’ family of rights that are also at your disposal. What cannot (or does not need to) be protected by trademarks may be protectable through other IP rights. Industrial designs, copyright, domain names should also be used to create a network of legal protection.
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, even if the law often seems to be lagging some way behind when it comes to facilitating their protection.
Non-traditional trademarks are a good example of this. As services rise in importance over traditional goods/products, ways of communication naturally change. Even traditional businesses, such as banks or department stores, are calling on once unusual forms of branding, such as colours, smells and jingles, to differentiate themselves from their competitors. As a result, so-called non-traditional trademarks have risen in importance, and need to be taken into consideration when building an IP strategy.
In the luxury and the FMCG sectors, anti-counterfeiting efforts also need to be stepped up, as the trade in fake continues to explode online. If companies are to avoid spending all their time and efforts fruitlessly chasing infringers online, they need to revisit their anti-counterfeiting strategy and invest in online enforcement (see our article: Is your anti-counterfeiting strategy up to scratch?). Image search and data clustering tools, as well as technology to capture and track infringing information, will become key in years to come.
Geographically, three main jurisdictions should attract most companies’ attention in addition to their local markets: the People’s Republic of China, the US and the EU – not forgetting Brexit.
The People’s Republic of China is too important a market for most businesses to overlook, and anyone wanting to penetrate this market needs to adapt. Overconfidence in their brand equity has wrong-footed a number of luxury companies, who paid the price for not transliterating Latin names into Chinese script (the dispute between Michael Jordan and Qiodan Sports Company illustrates the importance of transliteration). Companies also need to watch out for counterfeiting, particularly by Chinese manufacturers and intermediaries, although progress is being made, e.g. in terms of challenging bad faith trademark filings, in the country.
On the other side of the globe, any IP strategy needs to address the US separately. The national rules and practices there are like no others in the world, and deserve not only attention but also specific budget for overcoming hurdles such as: the need to adapt the specification of goods/services to the local practice; to provide the correct evidence of use to obtain registration; and/or to file adequate and timely Declaration of Uses for keeping a trademark registration alive.
Back closer to home, the final provisions of the EU’s trademark reform came into effect on 1 October this year. Alongside reform targeted at bringing more uniformity to IP practices across the EU, the EUIPO also introduced several important initiatives; namely, (1) changes to the rules for graphical representation, which should give non-traditional trademarks a real chance to thrive; and (2), the creation of a certification mark registration system, which will be of particular interest to industries where consumers are increasingly concentrating on quality, environmental and ethical issues.
Finally, it’s impossible to consider trademarks in the EU without mentioning Brexit. However, while there are many questions being raised at this point, there are absolutely no certainties, and this puts companies in a regrettably difficult position. (For our latest update, please see 'Brexit – what will it mean for your IP?').