Covering All Your Bases

20-05-2018

Covering All Your Bases

For large multinational companies, brand protection is a matter of combining an assertive approach to discovering infringement with proactive steps to securing rights, as Sarah Morgan reports.

“Your market is really the world. From a brand perspective, you need to protect it everywhere or you risk erosion to the brand.”

These are the words of Patrick Keane, Executive Shareholder, Buchanan Ingersoll & Rooney P.C. (USA), who was responding to a question from the audience on how aggressively businesses should protect brands in areas where the business isn’t operating or plans to operate in the foreseeable future.

For Laure van Oudheusden, IP & Standards Manager of Health & Wellness and Personal Care at Philips Intellectual Property & Standards (the Netherlands), protecting the company’s US $11.5 billion parent brand is vital.

During CSA21 Generating Effective IP Protection Efficiently: Building a Trademark and IP Department for International Corporations, yesterday, she gave an example of Philips' approach even when the infringing product is not one which the company makes itself.

“It wouldn’t matter so much how many of these products we sell, it’s blatant infringement so we want to do something,” said Ms. van Oudheusden.

“That’s why we enforce our brand even on products where we’re not competing,” she said, adding that this type of infringement has a high impact on one of the biggest assets of the company.

Ms. van Oudheusden recommended a form of “double monitoring,” where the business monitors infringement as well as the IP team, “because the business knows better what the key threats are”.

She went on to explain that it’s easier for the business to track new entrants in the market and that it’s useful to promote a dialogue to prioritize actions.

“The less resources you have, the more you need to plan,” added Ms. van Oudheusden.

Philips Intellectual Property & Standards, which manages all the licensing and IP activity for Philips, works like any other type of business, responsible for creating value and controlling its costs.

Ms. van Oudheusden stated: “This governance model helps us to know how and where value is created and to focus on activities that create the most value.”

"This governance model helps us to know how and where value is created and to focus on activities that create the most value."

Mr. Keane noted that as the world becomes increasingly globalized and moves to “an era of grand technology disruption and reorganization,” brands should focus on the future.

“Find ways to use your IP to effectively leverage relationships,” he said. According to Mr. Keane, the future will see many companies in different spaces creating smart products. He recommended that when developing IP, companies take into account the companies they will deal with in the future.

Building a Shield

Stephan Wolke, CEO of thyssenkrupp Intellectual Property GmbH (Germany) and moderator of the panel, explained that five years ago, his company wasn’t even sure how many patents it owned.

Since then, there’s been a dramatic change, with the brand building up an effective IP shield.

When Mr. Wolke first took up the role, the company was filing fewer than 300 new patents per year. Now it’s managing to file 600.

To build a shield, Mr. Wolke launched patent councils in each of the company’s 25 business units. The head of research and development in each unit meets with other members every three months to discuss the full-cost of creating the desired IP . After hiring 50 patent lawyers, the company is insourcing 50% of its work, as compared with 100% outsourcing previously.

Building up an effective and efficient shield also means that “IP is reflected in some way in every contract we do with the outside world,” explained Mr. Wolke.

Mr. Keane, who works with companies to help cultivate an IP shield, concluded that it “all begins with creating a solid foundation that’s grounded in efficiency and effectiveness.”

INTA, INTA18, trademark infringement, IP rights, IP portfolio

WIPR