The in-house holy grail

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.”

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