International trade mark portfolio management
We clarified and organised the ownership of our client’s newly acquired suite of international trade mark registrations, and implemented plans to strengthen their global trade mark portfolio.
Background
Our SME client provided specialist services in a number of countries, based on technology acquired from a third party vendor. The service brand was protected by trade mark throughout the world. Corporate restructuring of the vendor led to changes in ownership of the trade mark registrations that were acquired by the company. The service brand was critical to the company’s business but there was uncertainty about what was protected and where. We were asked to review and advise.
What we did
We audited the existing trade mark portfolio and advised on how our client could strengthen its protection. The ownership status of the registered trade mark portfolio was reviewed, and a staged plan was developed for recording the chain of title of the trade mark registrations at the national IP offices.
Recommendations included:
- Expanding the scope of protection in key territories where the lists of goods and services in the existing trade mark registration were inadequate
- Reducing future renewal fees by consolidating national European rights into Community trade mark applications which claim seniority from the national rights
- Using the Madrid Protocol system to increase geographical protection of the brand
- Tracking competitor activity by establishing trade mark watches
- Implementing an international trade mark filing strategy
- Raising internal awareness of best practice in relation to trade mark use
Outcome
The audit of the existing trade mark portfolio allowed ownership of the IP rights to be changed to the correct legal entity. Implementing our recommendations provided the client with an updated trade mark portfolio with increased geographical and service protection. The client had clear trade mark filing and tracking policies that reduced the management and financial resources required for ongoing maintenance.
How we can help you
- We have the skills and experience to record complex chains of title in international trade mark portfolios
- We can advise on staged assignment recordal programmes that balance costs against risk of enforcement compromises
- We can review and update your trade mark portfolio as your business grows to ensure adequate protection is in place for your expanded markets
- Our knowledge of international filing systems allows us to develop and maintain your portfolio in a cost-effective manner