In this article, our trade mark solicitors will explain what best practice is when it comes to trade mark portfolio management, the tools that businesses can use to manage trade marks more effectively and the potential issues that could occur if you don’t proactively manage your trade mark portfolio.
Contents:
What is trade mark portfolio management?
Trade mark portfolio management refers to the methodical process of organising and safeguarding a company's collection of trade marks. This involves actions like registering new marks, keeping watch for potential infringement, renewing existing registrations, and employing the marks strategically to maximise their value.
How often should a trade mark portfolio be reviewed?
Your business is constantly changing and evolving, whether it be developing new products, expanding into an overseas market or taking on new staff. All these changes have an effect upon your branding strategy and need to be assessed for any impact on your trade mark portfolio. For example, new staff will need to be trained in how to use the business’s branding and logos to ensure that any marketing or packaging matches the brand’s image and values. New products will need to be registered under new or existing trade marks if they are not already covered and clearance searches and checks should be conducted to ensure that your proposed brands are free to use in any proposed new overseas markets.
Trade mark law is also constantly evolving and legal developments may necessitate a review of your portfolio to evaluate any potential impact on your brands and registrations. For example, the Brexit legislation has had a wide ranging impact on trade mark protection and prosecution in the UK and European Union. European Community Trade Marks no longer cover the UK and as of 1 January 2024, the UK IPO requires all UK registered trade marks to have a UK, Gibraltar or Channel Islands address for service if they are involved in any invalidation, rectification, or revocation proceedings that are commenced after this date. Your portfolio will need to be monitored to ensure that your registered marks fulfil any new legal requirements such as this and to look for gaps in the portfolio that may need to be filled as a result of legal changes.
You should work with your trade mark lawyers to conduct comprehensive portfolio reviews at least every two to three years, depending on the size of your business, as well as ad hoc reviews whenever the need arises eg: If you intend to sell your business or you are approaching a funding round.
What risks are associated with poor trade mark portfolio management?
- Risk of infringement
Businesses that do not invest in portfolio management face an increased risk of trade mark infringement claims and other objections. For example, you may have entered into a coexistence or licence agreement that involves one or more of your trade marks, as a result you are likely to have restrictions in place as to how and where you can use those marks. If you and your staff are not aware of this, you could risk breaching the agreement and becoming liable for infringement or passing off and face financial penalties as well as any licences and allowances being revoked. - Loss of enforcement opportunities
You will also have less opportunity to exploit and gain value for your trade marks, which could be vulnerable to revocation, infringement and counterfeiting by third parties. In some countries it is necessary to have a valid registered trade mark in order to take action against third parties. Some online marketplaces such as Amazon require a mark to be registered before a take-down notice will be issued. If your mark is not registered or the registration has expired or been revoked, such actions will be unavailable to you and your business may suffer as a result. - Loss of rights
In the UK, registered trade marks become vulnerable to action for revocation on the grounds of non-use if they are not put to genuine use in the market within five years’ of registration. You will need to review your registered marks to determine where you think they will realistically be used both now and in the future and evaluate whether it is worthwhile keeping any potentially redundant marks on the register. Registered UK trade marks also need to be renewed every ten years from their registration so you will need to keep on top of renewal dates and decide whether you want to renew each registration in full or in part only. International registrations have their own “in-use” requirements and renewal deadlines so your trade mark lawyer will also need to keep track of these and advise you of any strategic considerations in advance. You will need to keep records of where and when each mark has been used and be able to provide dated samples and examples of such use if required by an international Registry to maintain a registration or in the event of a third party challenge to one of your registered marks. Trade marks which have not yet been used could be exploited through licensing or sold for a profit so it is important not to overlook such possibilities.
Use of the mark which is not exactly in the form in which it is registered should also be monitored, especially in relation to logos which are often updated and re-designed. In the UK, minimal variations in use are allowed only to the extent that they do not alter the distinctive character of the mark. Other countries’ use requirements should also be monitored and you should liaise with your brand development and marketing teams before any decisions are made to alter or ‘update’ any wording, logo or slogan. You should produce clear brand guidelines and user manuals and regularly update them and distribute them to staff and third party contractors so that they know exactly how your trade marks should be used.
Develop a trade mark filing strategy
Being proactive about portfolio management means that you can plan your business goals and expansion strategies with more certainty, knowing that your brand is likely to be protected and/or free to use in a particular territory before you invest too much in any particular trade mark. This usually involves the following considerations:
- File new trade marks when appropriate
Trade mark registrations should be considered when you create a new brand, sub-brand, logo design, packaging design or slogan that your business intends to employ. This is not just a case of register everything possible in every possible jurisdiction for every type of product or service. There are cost and time implications and you will need to devise a filing strategy that prioritises your main brands, core business activities and key territories. For example, if you use a word mark and various logos, registering the word mark alone in standard font will usually give the broadest protection. In some countries, logos can be registered in greyscale for flexibility so that you are then free to use them in any colour combination. You may decide that trade marks for seasonable products only, may not require individual registration. In every case, you should conduct a cost/benefit analysis to decide which of your marks to register, taking into consideration your existing portfolio, your competitors, any current and potential legal issues, the flexibility and breadth of protection to be gained by each registration and your current and future business plans. - Conduct availability searches beforehand
Once you have decided upon your filing strategy, you will need to conduct through research to see whether your chosen trade marks are likely to be free to use and able to be registered in your chosen territories.
Clearance searching involves checks of the trade mark registers to see which marks have already been registered or filed and common law searches to see which marks are actually in use by businesses.
Ideally you need to carry out full, comprehensive searches which are usually conducted by a specialist search company or trade mark lawyer. These searches usually include similar marks that are registered for similar goods and services as well as identical marks registered for identical and similar goods and services and may cover your primary markets and any additional secondary markets if you also require them. These searches can be costly and time-consuming depending on the parameters of the search and the number of goods and services and territories included. So, in practice they may be reserved for your most important trade marks and logos and/or used where you think there may be competitors with similar marks already registered.
You can conduct basic “identical match” searches yourself or though an attorney to identify any immediate obvious bars to registration and/or use. This can done quickly and more cheaply, for example if you have a tight deadline before a new brand is launched. Such searches have their limitations and should definitely not be relied on if you have the budget for more comprehensive checks as this can save you more time and money in the long run, should an issue arise once you have filed your application or started to use your trade mark in business.
Common law searches include internet searches, domain name searches, Companies House searches, directory searches and market knowledge.
If one or more problematic ‘prior’ marks are found to exist, you can then do some more research into the mark owner, their size, financial standing, field of business and whether they are using the mark yet in a particular territory. This commercial research can help you to ascertain the level of risk in practice in continuing with your chosen mark or whether the threat lies only on paper. You may decide to contact the owner to enquire about obtaining a licence or consent to use or register the mark; wait and see if a prior mark is renewed or abandoned; or decide to take action against a prior mark registration if it is vulnerable to revocation on grounds of non-use or if you think you have prior common law rights in a territory. - Using national/regional/international routes to registration
There are different ways to protect a brand abroad and your international filing strategy will depend upon various factors, including but not limited to cost, existing portfolio considerations, intention to use and evidence of use requirements, timings, prior conflicting registrations, competitors and expansion plans. - First to file or first to use
Some countries, such as the USA, have ‘first to use’ requirements which means that prior rights are deemed to be held by businesses that have used their mark first in commerce, rather than registered the mark first. This means that you will need to file evidence to show that your mark has been used in that territory for the goods and services covered and you will need to keep accurate records and docket when such evidence is required to be submitted. If you do not have plans to use a mark for a while then you may want to postpone registration in these countries. Other countries, such as the UK and EU, operate a ‘first to file’ system whereby prior rights are deemed to exist once a mark has been filed, regardless of actual use of the mark or prior use of similar marks in commerce by others. - Priority filings
Another important consideration is whether you have recently filed an application to register the same mark in another territory in the past six months. If so, then you may be able to benefit from an earlier filing date that is backdated to the date of first filing of the identical mark in a ‘priority’ country. The marks must be identical and the goods and services to be covered must also be identical or a subset of those covered by the initial registration. Priority deadlines should be diarised and given due consideration in your filing strategy. - The different approaches to filing trade marks – separate national applications or EUTM/Madrid Protocol filings
If you want to trade in various European countries then you may wish to file a single European Union Trade Mark application which covers all current territories of the European Union, as well as filing a separate UK trade mark application. Following Brexit, the applicant for an EU mark, or its representative, must have its domicile, principal place of business or a real and effective industrial or commercial establishment in the European Economic Area. So, you may want to secure a ‘home’ UK registration and then use this to claim priority from for a separate new EU trade mark, filed within six months.
You can also use your ‘home’ registration or application as the ‘base’ for an international application filed via the ‘Madrid Protocol’. Again, if filed within six months’, you should be able to gain the priority filing date of the home registration. A Madrid Protocol application allows you to apply to register a trade mark in multiple countries simultaneously by filing a single application at the World Intellectual Property Office (WIPO). It can be cheaper and easier to administer than filing separate national applications individually in each country. You can also add additional countries to the international registration at any time in the future, by way of ‘subsequent designations’. If your ‘home’ registration is cancelled in the first five years’ of the international registration, then the international registration will fail to the same extent, in each country applied for.
If your ‘home’ registration is vulnerable in this way, perhaps due to earlier competing marks whose owners may later discover and attack your registration, you may prefer to file separate national applications via local attorneys in each country of interest. These will not be dependent on a ‘home’ registration. You may also want to file variations of your mark in different countries, perhaps to better suit foreign language translations, in which case a Madrid Protocol application would not assist. A national filing approach can be more expensive and difficult to manage.
Analysing your trade mark portfolio as a whole, will allow you to establish timelines within which to stagger your applications, taking advantage of priority deadlines wherever possible. You will need to examine where the key risks are and take a cost/benefit analysis approach of protection. A continual review of your products and services is also required as these may also expand over time. It is not possible to add extra goods and services to a mark once it has been registered so new registrations may be required.
The more marks you register, the greater the cost implications in terms of renewing, monitoring and enforcing those marks over time so this will need to be balanced against the risks of leaving a mark unregistered.
Monitoring and enforcement
As a trade mark owner it is your responsibility to enforce your own marks against competitors. You must be proactive in drawing up a protection and enforcement plan so you can budget ahead should an issue arise.
- Trade mark monitoring
Trade mark monitoring or ‘watching’ services are designed to inform registered mark owners of new similar, identical or otherwise competing trade mark applications in the countries designated to be watched. These can be conducted by a lawyer or by a third party specialist watching company and the results then analysed and reported to you by your trade mark lawyer. - Trade mark enforcement
If a new application is identified which could pose a threat to your brand, you can then decide what action to take against it, if any. This could involve writing to the applicant to draw their attention to your prior trade mark rights, filing threatened opposition notices, negotiating licenses or coexistence agreements or filing opposition or cancellation actions straight away. Your approach will depend on questions such as, is the trade mark core to your business, does the damage caused by the infringement outweigh the costs of litigation, what are the infringing party’s finances like, are you likely to recover legal fees/damages, will there be damage to your reputation in taking too aggressive a stance?
Your trade mark lawyer will be able to help you in formulate a proportionate and appropriate enforcement strategy that fits your business.
Renewals and maintaining records
Effective portfolio management is only possible if you and your lawyer have easy access to your portfolio and the details of each mark within it. This should include up to date records of deadlines, correspondence, official communications, agreements, licences and contracts and any other information pertaining to each mark, in all jurisdictions.
You need to ensure that all changes of address, email and correspondence addresses, licence details, specification amendments and restrictions, security interests and other changes affecting your trade marks during their lifetime are kept up to date in your portfolio and also notified to the relevant country registries on a timely basis.
In practice such docketing and reminder systems are often maintained externally by trade mark lawyers, who will inform you of any upcoming deadlines or filing requirements. You should keep copies of the most important documents and an up-to-date summary of your portfolio close to hand so that you can easily refer to these when business decisions are being made.
For each brand, it is recommended that a filing sheet be set up and saved, in order to document the filing strategy and set out comprehensive details of all of the trade mark filings and registrations associated with that brand.
Summary
Managing a comprehensive trade mark portfolio can be a daunting job. Working together with an experienced trade mark lawyer, keeping good business records and taking a proactive approach, you will find that the benefit to your business will be well worth it, allowing you to plan and budget ahead and exploit your trade marks to the fullest, controlling events rather than reacting to them.
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