In-house counsel managing large trademark portfolios say speedy results, striking imagery, and the ability to store key information in one place are key requirements for managing their marks.
Speaking to Managing IP, trademark counsel at Reckitt Benckiser (RB), FIFA, AB InBev and others say the areas they require modern and fast solutions for are: helping manage the renewals process, proving use of a mark, and determining where the threat of non-use lies.
The counsel tell Managing IP that these key aspects of portfolio management can be time-consuming and a struggle for in-house teams, as service providers, including one launched in January, look to offer new state-of-the-art solutions.
Data demands
Daniel Zohny, head of intellectual property at football governing body FIFA in Switzerland, says one area in which the company desires a workable solution is the collection and storage of information to prove trademark use.
When proving use, including during opposition hearings, counsel are often called upon to produce evidence. This can include financial reports, social media activity and written articles about the mark, as well as images and marketing material.
“A database for all the data related to this, including photos and documentation, to be stored and deposited and with shared access between marketing and legal departments, would be handy,” Zohny says.
He explains that in many companies, this type of work is carried out using shared network drives with folders and sub-folders.
“It is cumbersome and can be quite time-consuming, and searchability is not great – which can be discouraging for in-house teams,” he adds.
Charlie Everitt, head of trademarks at consumer goods company RB, says that for companies with large trademark portfolios (his has around 40,000 rights), data management can be a very complex task. Having quick access to reliable portfolio data is therefore useful, he notes.
For RB, assessments of non-use are a handy exercise that can also feed into the trademark renewals process – itself a long and arduous task, Everitt says.
“These assessments are usually carried out on an event-driven basis, such as the acquisition of another portfolio following an M&A. After an acquisition, you always have to do a check to see where things stand.”
For these types of regular reviews, systems providing quick accurate data on different brands and sub-brands, along with their sales performance, would be a necessity, sources say.
Most brands store this information, but collating it into workable documents can take many months, they note.
Zohny at FIFA notes that strong visualisation and imagery would be an appealing feature.
“I would like something that is user-friendly and easy to view. Ideally, you should have a clear and simple image of what you need within a few seconds.”
Tools on offer
In-house sources note that there are several providers purporting to offer services to in-house clients on the trademark side – mainly focussing on monitoring. A quick Google search reveals several companies offering technology-driven solutions to detect trademark misuse online.
Some providers have been around for many years, while others are new to the scene.
One example of a new product is Iaidō, a platform launched by IP consultancy firm Stobbs at the end of January. It has been praised for its extensive data on sales and trademark use, particularly by multinationals with large trademark portfolios.
The platform uses big data tools to combine sales figures with a company’s IP to track the effectiveness of their trademark portfolio. It can also provide data on the threat of non-use in different jurisdictions.
Pieter van den Bulck, Belgium-based global director of IP at brewing and drinks company AB InBev – one of the earliest users of the platform – says the company decided it needed a tool to address the threat of non-use around two years ago.
“At that time, we were managing around 900 brands in 200 countries. Some of those were global trademarks, and some national, and we wanted to know where we were able to enforce and where we could face a potential threat of cancellation for non-use,” he tells Managing IP.
“This analysis was already possible using our own resources, but could have taken months – if not years – so we decided we had to embrace new technology.”
AB InBev set a challenge to its outside counsel to develop a platform.
Explaining the non-use assessment, van den Bulck says a colour-coded map displays data on countries where there is a threat of non-use, where there could be a problem in the future, and when the company should take action.
“Typically, if we decide to launch a new product or brand, we would file for a trademark in that country as intent to launch. Most jurisdictions offer a five-year grace period in which to start using the mark. However, products are not always launched within that period.”
ABInBev also uses the platform to see where its products are sold.
“Having quick access to accurate sales data right next to trademark data is crucial. With so much of a company’s revenue derived from IP and it being a key asset on their balance sheets, rights owners need a tool that can represent the interaction of IP and sales,” he adds.
In the market?
Two in-house sources have confirmed to Managing IP that they too are in discussions about using the platform. If they were to use it, it would be for non-use analysis, sales data reviews, and deciding which trademarks to pursue renewals for.
The UK-based head of IP at a well-known brand says it keeps sales data, both for its own products (through its own systems) and on competitor products (using platforms such as market research company GFK).
However, they add that these kinds of data are far more relevant to sales team than the IP or trademark team.
“This is partly because we don’t have a massive portfolio of different brands, and partly because we have a good idea of where our products are sold,” they note.
The IP head says the company has a good idea of where products are sold from its own sales data.
Because of the nature of the products, which tend to have a high value, retailers, distributors and consumers tend to buy directly from the company rather than wholesalers. This means there is less of a tendency for products to move across borders, the IP head explains.
They add that having instant access to sales information may be more useful for fast-moving consumer goods companies, which might not otherwise know how much of any branded product is sold in a particular market.
Zohny at FIFA agrees: “For an organisation like FIFA, which is geared towards fewer, mostly FIFA World Cup-related brands and licensing, the non-use assessments would be less of a priority than they would be for those brands with many different trademarks in multiple territories.”
Standing out
With competition fierce – standing out from the crowd is necessary.
The lead trademark counsel at a multinational consumer goods company notes that professional services firm Deloitte also operates a ‘Trademark Tracking Dashboard’, which primarily focuses on monitoring for misuse.
However, their sense is that Deloitte’s platform is not as advanced as others and is more geared towards trademark owners it has an existing relationship with.
Zohny at FIFA points out that some service providers are several years old and their technology may not be sophisticated enough.
“They may be reluctant to completely overhaul the technology they use because of the associated costs or time concerns and, as a result, it may not be as up to date and certain information may get lost in searches.”
When time is of the essence, technological problems will be unwelcome. Any new providers offering state-of-the art services will be a step ahead already.
