Would you explain how Coca-Cola structures its trade mark team?

Coca-Cola’s entire legal function reports functionally to general counsel Geoff Kelly. Historically, all the trade mark lawyers were based in Atlanta. However, several years ago, the company placed some of its in-house trade mark lawyers in its group offices (North America, Latin America, the EU, Eurasia, Africa and the Pacific). This has allowed them to better serve Coca-Cola’s client base because matters are addressed in real time.

In Atlanta, Bill Lummus, Coca-Cola’s associate general counsel for marketing, strategy, innovation and customer, heads the company’s trade mark function, which has three lawyers and four staff. They are responsible for overseeing Coca-Cola’s global portfolio of 30,000 registered marks and the coordination of global projects. Lummus also heads Coca-Cola’s patent function.

Together, all of the Coca-Cola trade mark lawyers work through the Trademark Practice Team. We have several face to face meetings each year, meet in virtual meetings periodically and communicate daily by email. For instance, we have met on a number of occasions to work out the logistics and workings of the Anaqua web-based IP management system.

The Pacific Group is responsible for all aspects of trade mark and related IP law such as searches, prosecution, renewals, licensing, education, enforcement and acquisitions. We also work with the

Coca-Cola’s corporate legal teams in Shanghai, Beijing, Hong Kong, Sydney, Manila, Tokyo, Jakarta and Seoul. All of these operations lawyers are an integral part of our IP function in that they are on the ground on a day to day basis. Coca-Cola’s China legal team is particularly impressive. Their work with our investigators, outside counsel, government authorities, our bottlers and our business and marketing clients has resulted in the cessation each year of many hundreds of counterfeits and infringements. And, of course, with the Olympics coming up next year in China, they are all actively involved in implementing our IP-related Olympic initiatives.

How do you work with external counsel?

With our outside trade mark counsels, we have a strong partnering relationship. We expect them to understand our business and industry and to not only provide us with sound legal advice, but also to provide us with sound commercial advice. Most of our outside counsel provide this service. Indeed, over the past 10 years or so, the quality of advice has improved tremendously. Also, the number of strong outside counsel has grown in the region.

In most countries in the Asia Pacific we generally have one firm handle all of the trade mark prosecution work (such as applications, registrations, renewals and licenses). We believe it is important – in most instances – to use one firm for prosecution work given that they inevitably develop good working relationships with trade mark office examiners.

For trade mark searches, conflicts and high level legal advice for complex matters, we sometimes use a second or even third law firm in a country. For instance for searches and day to day advice, we have identified a number of smaller law firms in many of the developing countries that provide excellent searching services and day to day advice at competitive rates. Then, for some very complex matters or important litigation, we may use a firm that has a long-demonstrated expertise in IP law in the country. In addition, of late we have been exploring the concept of having certain law firms represent us in a cluster of countries that have legal, commercial, and cultural similarities. The aim is to build on our relationship with that firm to identify opportunities for greater cost savings and greater efficiencies.