Do you know what’s in your international trademark portfolio?

Nadaline Webster,

I have never conducted an orchestra but I can see that it must be a very skilled and complex matter indeed. It is an excellent analogy for managing a trademark portfolio with a dependence on excellent timing, perfectly synchronised actions and a very quick ear for any discordant notes. Managing a large international portfolio then is as if half of your musicians have dialled in on a conference call from a range of other locations. They don’t all speak the same language. They are working in different time zones. Not all of them have the same music sheet and your keen ear is wasted on the ones who forgot to switch on the microphone so you could hear what they are playing.

Errors in international trademark applications:

Little wonder then that the margin of error in international portfolios is so high. Earlier this year, the team at World Trademark Review performed an analysis of over 30 international trademark portfolios belonging to a variety of medium and large companies and found “a surprising number of illogical filings, errors and gaps” . Similarly, a 2014 presentation from Marques noted that between 2007 and 2013, roughly half of the trademark applications processed through the Madrid System presented with irregularities. Between January and June 2014, 15,844 applications had no reported errors. 7,835 applications presented with irregularities and of these 25% had multiple errors and 7% of these errors were administrative in nature rather than relating to goods and services, for example. In the context of international registrations, errors are far from rare.

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Errors made in applications are not the only ones:

But there is a deeper and often equally expensive layer of errors than the ones picked up by the relevant intellectual property office. Internal errors or those between in-house and outside counsel are very commonplace and can go unnoticed for extensive periods of time.

As an example, last year I was assisting an in-house counsel team in amalgamating their international portfolio in Portfolio Watch. The portfolio ranged across Europe and North America and as the portfolio was handled solely by a very efficient and effective in-house team, no surprises were anticipated. Nonetheless, we followed best practice in searching both by their company name and their critical brands to ensure we had everything across all regions. After a quick search by company name, we had gathered all the expected marks. However, searching by brand name turned up an unfamiliar company name in a single EU region. On further investigation, the unknown company somehow seemed to have obtained a registration for every brand the company had over more than a decade.

Check your international portfolio

Clicking in to see the details of some of these registrations solved the mystery. A subsidiary company office located in Europe, in the mistaken belief that they were required to do so had therefore diligently and dutifully filed for a completely unnecessary local registration in addition to each of the existing ones filed at the EUIPO. Over the years, these amounted to a substantial number of registrations, each of course accompanied by the associated clearance costs, filing fees and monitoring expenditure. The team were speechless and given their detailed annual audit, were at a loss to understand how this had happened.

The truth is that it happens very easily and for a multitude of reasons. In this case, an initial small miscommunication made all too easy by language barriers led to a perceived need for local registrations. The annual audit failed to pick it up because they were filed citing the company name in its local language version. No search was done for the company name in this version because the people doing the audit weren’t aware of any reason why they should do so. With the sheer volume of elements required to administer an international trademark portfolio, you need to be very lucky indeed to avoid ever experiencing some small issue somewhere. And small issues can quickly grow into rather larger ones.

Why are errors in trademark portfolios so hard to find?

Every industry operates within its own ecosystem and the trademark world is no different. Over the years, the management of trademarks has grown as a labour intensive and time consuming process. Even as technology began to increase the availability and speed of access to information, so too did the expense as information was doled out in small packages by name, class and region - each attracting a payment tier. While these systems are undoubtedly profitable for the traditional vendors in this space, it has not proven to be quite so beneficial to the trademark owners who often find themselves flying blind to stay within budget. There are, more recently, many free tools with which to search for information but without a robust legal technology underpinning to assist, few have the luxury of time to carry out any but the most necessary searches.

The founders of TrademarkNow were trademark attorneys wearily familiar and frustrated by the lack of transparency and visibility. Providing cost-effective, instant access to all the information that is relevant and valuable to your company remains at the core of what we do.

Book a quick, free and zero commitment call to share a screen with one of our Trademark Analysts. They will be delighted to help you quickly aggregate and analyse your international portfolio, check for any surprises (pleasant or otherwise!) and let you experience true visibility over your assets in 5 - 10 minutes.

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