Reworking trade mark portfolio management

As those brands evolve and expand over time, companies can be faced with the management of large and unwieldy portfolios which are not fit for purpose and which can be expensive in terms of both financial cost and human resource to maintain. Overlay this administrative burden with the risks of the inadvertent loss of rights through missed deadlines, and it is important that the right systems are put in place to manage your trade mark portfolios efficiently, with robust diary management solutions.

In this current climate of increasing cost pressures, in-house legal teams are increasingly expected to provide more business critical, strategic advice. This is, therefore, an opportune moment for businesses to review their IP portfolios. By doing this they can optimize the management of the portfolios, reducing the time and cost spent maintaining it whilst making the protection and the risks around the portfolio more robust.

Declutter: For many businesses, trade mark portfolios may well contain registrations which are no longer in use, such as legacy brands, out-of-date logos or registrations in countries where the business no longer operates. There may also be duplications in protection, such as national European registrations sitting alongside EU-wide registrations and, in the post-Brexit world, duplications flowing from UK registrations automatically created from EU rights at Brexit. As trade marks need to be used to remain enforceable, businesses should take a robust approach to allowing marks to lapse, if they are no longer in use. A review of the portfolio at a strategic level will often lead to a streamlining of the portfolio which, in turn, will lead to direct cost savings. It may also have the additional benefit of being a catalyst for closer engagement with key stakeholders across the business (such as marketing and brand teams) to build closer co-operation and lead to enhanced pro-active brand protection practices across the business.

Flex your IT systems: If you are managing a portfolio in-house, it will be cumbersome, inefficient and inherently risky to rely on a spreadsheet or other home-grown system to monitor deadlines and manage the portfolio. If you do not have access to a dedicated trade mark management system, task your in-house IT team with looking at ways in which existing technologies within the business can be re[1]purposed to facilitate the management of the portfolio, to track the status of applications, store data about the portfolio and monitor deadlines.

Outsource: Outsourcing the management of a portfolio can provide a cost-effective and time-efficient solution. If there are pressures on the in-house legal team head count, outsourcing responsibility for the management of a portfolio can free up time, allowing the in-house lawyers to focus on the more complex, strategic work. It can also de-risk the management of the portfolio, with responsibility for the management of deadlines resting with the attorney firm. Lines of communication and playbooks can be agreed to ensure that the management of the portfolio is undertaken with limited input from the business.

In outsourcing the management of the portfolio, you may be able to leverage and benefit from the technologies used by the external attorneys. Today, there are many specialist third party systems on the market which can drive efficiencies into the management of a portfolio, providing more robust diary management solutions and allowing greater control on workflows, task management and costs.

Automation for the everyday tasks, such as filing requests, data verification and renewal instructions, can take time and cost out of the management of the portfolio. Similarly, systems can be deployed to better manage workflows and case trackers can lead to operational efficiencies and provide greater cost controls. Cloud-based secure file sharing, team collaboration and networking software can also provide technology-assisted support to the operational management of a portfolio and its security.