WIPR webinar: L’Occitane and Abbott discuss IP recordals
Managing IP recordals is vital to the smooth-running of businesses, as executives from L’Occitane en Provence and Abbott explained in a recent webinar.
The WIPR webinar took place yesterday, June 27, and was co-presented by Anna Popova, director of IP recordals at IP service provider BrandStock.
Popova explained that there are many reasons for updating ownership details at local offices, including tax requirements, restructuring, a change in ownership or renaming the company, and that it’s important to ensure these changes are made.
“If there are some discrepancies in ownership details, you might face serious problems … and, in a nutshell, risk your IP rights,” said Popova.
But what is the best way to manage your recordals? There are two options: all at once or piecemeal.
“We are often faced with staffing, education and legislative issues in respective offices and sometimes in our own departments,” said Sandra Hammelmann, paralegal supervisor at Abbott.
These issues can impact how businesses take care of the recordation of changes, whether that’s through changing the entire portfolio at once or in a piecemeal manner.
In Hammelmann’s experience, a piecemeal approach will cost less in the short term, but in the long run, the “accumulated costs are very often higher” than recording changes for the entire active portfolio.
“Over the years, the troubles resulting from selective recordation tend to increase,” she said.
For example, if you find that the wrong information has been provided and the trademark was not transferred, recordation changes must then be made under time pressure.
“Sometimes the commercial group can become interested in trademarks they weren’t interested in before, and that can happen when time has gone by. It gets more and more difficult to effect the recordals since knowledge gets lost,” said Hammelmann.
For Ingo Dauer, group legal director at L’Occitane en Provence, because a trademark portfolio is a very important aspect of a deal, whether merger or acquisition, it’s very important to evaluate the portfolio.
“You might be surprised to find that the trademarks are owned not by one person but by several, and you need to consolidate the trademarks to get the marks transferred,” said Dauer, adding that this can take some time.
There are two types of acquisition: share deals (where the trademarks remain with the target company and are acquired as part of the deal); and asset deals (where each asset, including the trademarks, are transferred separately).
For a successful asset deal, you need to do your homework to check that the ownership of the trademark is properly defined, and to note the cost of the IP recordals.
“Each deal has to be done in the shortest possible time—timing is of the utmost importance. You need a service provider or in-house colleague who can get it done quickly and not endanger the deal,” explained Dauer.
The executives also outlined how to manage a recordals project, such as how to fix a budget, handle invoices, and prepare documents.
