The in-house holy grail

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

The in-house holy grail

It is the million-dollar question: how can you manage your trademark portfolio on a budget while ensuring your brand is protected? Registrants yesterday received tips for doing more with less.

Moderator Cameron Olsen of Sports Direct and the other panelists explained how IP counsel can protect their brands and cut costs using three scenarios that covered the “birth, life and (avoiding the) death of a trademark.”

Tom Heremans of CMS DeBacker, Nicole L. Linehan of Schneider Electric and Natalie Salter of Lane IP began by offering advice on trademark prosecution, including tips for in-house counsel who want to rethink their relationship with external counsel. “You need to decide what your priorities are if you want to hold an external panel review,” said Linehan. She suggested that they focus on levels of transparency, collaboration, efficiency and cost control.

They discussed the pros and cons of outsourcing global filing work to a single firm, or managing relationships with trademark agents in each of the countries where protection is sought. Olsen explained that his company has brought much of its filing work in house. “If we have a question related to a trademark license, or an infringement issue in a particular country, it can be very effective to have a single point of contact in the relevant market.”

The panelists also addressed the potential “death” of the trademark by looking at ways to cut the costs of dealing with infringement. Cameron offered a scenario to work through: “Your CEO tells you that if fake products aren’t off the market within a week then you are out of a job.”

Heremans and Salter outlined the ways that trademark owners can make use of customs rules to prevent counterfeits entering the European market. “If you can do that then you don’t incur high costs and you can keep your job,” said Heremans.

As for ensuring job security in the longer term, Linehan advised in-house counsel to keep management updated about the budget they require. “You need to have a good talk about long-term strategy and how you can manage those costs.”

more from across site and SHARED ros bottom lb

More from across our site

News of Ultrahuman suing Oura in India and Apple accusing Oppo of trade secret theft were also among the top talking points
The firm has added six practitioners in recent weeks as it takes measured steps to build its IP practice with a focus on trade secrets work
Partners at law firm Silva reveal how their recent geographical indication win in India for Chilean Pisco paves the way for future victories internationally
Lawyers at Finnegan unpick the UK government’s SEP consultation, and offer tips for patent litigators
In major recent developments, a request for automatic service to counsel in provisional proceedings was rejected and a PI covering Spain was granted
Julia Ericsson of Sandart in Sweden discusses litigating patents at the UPC, overcoming prejudice and how to encourage associates to develop their careers in IP
Reed Smith lawyers say that with the UK’s AI law in a state of flux, IP owners should look beyond the country's borders
We preview Managing IP’s ‘IP Ones to Watch’ list, meet our newest recruit, and look back over the final law firm rankings release of the year
Michael Conway and Flora Hachemi of Haseltine Lake Kempner consider what brand owners and prospective trademark applicants need to know in the wake of the UKIPO’s SkyKick guidance
Our exclusive survey reveals German firms are failing to manage costs and develop young talent, but some counsel believe this is happening behind the scenes
Gift this article