5 ways to future-proof your international trademark portfolio

Businesses and their trademark departments need to react quickly to new global and digital challenges today if they are to secure their brand for the future. In a series of recent webinars, Nicolas Maes from Novagraaf joined experts from Questel, GrandVision and Luxottica to discuss ways to effectively manage international trademark portfolios in light of current and emerging new world challenges. We summarise the key points discussed.

In recent years, the task of protecting and enforcing international trademark portfolios has become ever more complex. Not only have the number of trademark applications increased, but so too have the risks that brand owners face both off and online. In addition, trademark professionals must proactively manage their valuable trademark assets with fewer resources and smaller budgets.

In a series of recent webinars, hosted by Questel, we discussed the challenges and opportunities currently facing brand owners with Jonathon Tully, Senior IP Legal Counsel at GrandVision and Alessandro Zito, IP Manager at Luxottica providing the corporate perspective.

Meeting trademark challenges: From online brand protection to portfolio rationalisation

Trademark departments have become well practised at adapting their brand management strategies and processes to meet new threats and opportunities. But recent challenges, from COVID-19 to the growth of the digital world, are piling more pressure on IP professionals than ever before. Here are five key ways to meet those challenges:

1. Invest in online brand protection

The online threat is ever-present and shows no signs of abating with non-fungible tokens (NFTs) and the metaverse poised to become the new Wild West for trademark owners. The rising impact of the digital world has already forced trademark owners to re-assess their trademark protection strategies. Moving forward, we expect to see the focus and investment in brand protection continue to increase, as companies seek to navigate new digital environments. Trademark rights will continue to play a key role in enforcement with companies also needing to rely on both copyright and existing IP law to enforce their brand assets. (Find out more about brand protection)

2. Consolidate your trademark portfolio

It goes without saying that a disorganised portfolio is more expensive and time-consuming to maintain, but did you know that the same applies to portfolios managed by multiple providers? Centralising your IP will enable you to create a harmonised approach based on greater knowledge and awareness of your portfolio, make budgeting and forecasting easier and reduce overall portfolio management time. A consolidated portfolio will also help you create a more effective and unified strategy for trademark registration and protection. As important, it will free up the budget you need to prioritise new digital threats and opportunities, such as those posed by NFTs and the metaverse.

3. Prepare for a digital future

By rationalising and consolidating your portfolio, you will not only be in a better position to protect your brand, but also to exploit the opportunities offered by the digital world. Companies are already exploring the different marketing and customer experience benefits (e.g. McDonald’s McRib NFTs), as well as opportunities to monetise IP and introduce new anti-counterfeiting features (e.g. Nike’s CryptoKicks patent). By anticipating and getting involved now, you can also ensure you are protected in the future by extending trademark registrations into the virtual sphere (classes 9-35 and 41-42). Examples here include Ralph Lauren’s US applications seeking to protect store services featuring virtual clothing and accessories for use in online virtual worlds (35) and online, non-downloadable virtual clothing and accessories for use in virtual environments (41). Nike also filed to protect its brand for similar items in November 2021 at the EUIPO and USPTO, including ‘downloadable virtual goods, namely, computer programmes, featuring footwear, clothing and accessories’ and ‘for use in online virtual worlds’ (9). 

4. Get the right IP management technology – and support

The IP management tools and services you use also need to respond to your business’s evolving needs, including ensuring you get the right advice today to prepare your IP and business for the future. Balancing cost and quality has always been a challenge for IP departments, but consolidation and rationalisation can also provide the answer. By building a central hub for trademarks with all your data stored in one place, you will gain the overview and data you need to inform decision-making. As important, it provides the opportunity to keep costs under control and to track management fees so you can create a clear, transparent and predictable budget.

5. Eliminate inefficiencies in trademark management

It is advisable to run a portfolio audit or data verification project to identify any errors in your current portfolio, ideally as part of your wider consolidation project (see point 2). In this way, you can be sure that the data held in your IP management system is accurate and up-to-date, and use it to effectively make decisions on trademark registrations and renewals. To be as efficient as possible, your IP coverage should be aligned with your business’s mid-term strategy and, at the minimum, reflect and support your core products or services. This will ensure you’re spending your time and energies in the right areas, and provide the opportunity to compare your IP costs to your actual priorities. We recommend running an IP costs benchmarking project to understand where you can cut costs immediately. You can also streamline the admin involved in managing invoices and correspondence from global agents considerably by choosing a supplier who provides centralised invoicing, invoice checking and cost management services.

Watch the discussions in full for additional insight and advice:

• Session 1 (with Jonathon Tully, Senior IP Legal Counsel at GrandVision)
• Session 2 (with Alessandro Zito, IP Manager at Luxottica)

For tailored advice on preparing your trademark portfolio for a global and digital market, speak to your Novagraaf attorney or contact us below.