Procter & Gamble: Keeping the IP House Clean and Tidy

23-05-2017

Managing a global trademark operation at Procter & Gamble is no easy feat, especially when dealing with hurdles such as piles of papers and changes of address, as Deborah Brincat, Senior Legal Manager, tells Ed Conlon.

For every man seeking a clean shave, GILLETTE razors provide useful tools. For parents, PAMPERS diapers perform a vital service. And for anyone tackling the dirty dishes, FAIRY dish liquid brings welcome relief.

It’s not easy categorizing U.S.-headquartered Procter & Gamble (P&G), the owner of these brands and many more. The company’s array of products are found in households across the world and play a multitude of unsung, yet vital, roles in the domestic lives of millions of people.

Underpinning this success is a focused, global approach to intellectual property protection. The company has approximately 80,000 trademark registrations covering multiple jurisdictions around the world. Staying on top of this portfolio is no easy task, and Deborah Brincat, Senior Legal Manager at P&G, is responsible for the company’s global trademark renewals and ownership records, as well as other duties. 

Overseeing a huge operation for an international company such as P&G comes with its own set of challenges. Every issue regarding brand rights is magnified. Inefficiencies in the application process or costs of filing can be the source of a huge amount of friction. This is especially true for a company constantly looking to expand into new territories, where the rights protection system may not be as modern and awareness of the importance of IP rights not as high.

The Need for Digitization

“One of the biggest challenges with global renewals is when previous renewals aren’t recorded. It’s still paper files and they’re put into piles and hard to find,” Ms. Brincat says.

Failing to keep electronic records may be a seemingly trivial issue on the surface, but it can cause many headaches. For instance, P&G merged with Gillette approximately 12 years ago and is still dealing with some of the legacy issues from the transaction.

“Gillette has been a complicated one. Before we acquired the company, many trademarks were being assigned from the UK company to the U.S. company and these assignment recordals are still pending in countries where the trademark filing system was not computerized,” she recalls.

“Also, we’ve changed the company’s address, which has led to the renewal of many trademarks being suspended while the ownership change is not recorded in countries such as Bangladesh and Sri Lanka. And in countries where the electronic system has not been set up, such as Pakistan, you have to go into the office and ask them to look for the paper files.”

The other big difficulty, she says, is transferring files in some countries from one law firm to another, which “makes it hard to complete recordals or applications.” 

Ms. Brincat has a great appreciation of the importance of having a modern administrative service. Having been involved with INTA for 15 years, including time spent on the Trademark Office Practices Committee, where she served a term as Vice-Chair, she currently serves as the Vice Chair of the Association’s Trademark Administrators Committee and is very familiar with the obstacles to seeking the necessary protections.

“We also have big challenges after we have acquired companies and try to keep the trademarks in the name of the acquired company. At some point someone starts filing the trademarks afresh in the name of The Procter & Gamble Company. This causes an issue in many countries, especially Latin America, because you can’t have two companies registering the same trademarks. 

“Inevitably this leads to office actions and the trademarks being assigned from one company to the other.

“It becomes a long process and not very easy to handle. We will decide who should be the owner and then assign the marks to overcome the office actions. Trademarks are being moved around a lot, and this creates extra work and expense,” she says.

Different standards for IP protection apply from jurisdiction to jurisdiction and dealing with the idiosyncrasies of each system can be a problem for rights owners who need to move quickly. Even though the Internet has enabled people to complete a number of tasks around the world from one location, some offices are failing to take advantage of today’s communication tools.

Ms. Brincat says: “Globally we have to get everybody computerized—I have been told that in Sri Lanka the IP Office only has two computers.

“There are still many countries where you need documents notarized and legalized by the embassies, which is very time consuming. It is always a lot of work for us and the vendors we use, and it can get very complicated.” 

Although North America, Europe and some Asian and Latin American countries have better processes, challenges still lie ahead. One such issue comes from trademark reforms in the European Union, under which the requirement to graphically represent a mark has been abolished. Until all trademark offices catch up, a graphical representation will be required when claiming priority or basing an international registration on the European Union trademark.

Each system has its unique characteristics and presents its own challenges, but P&G is an experienced global operator that is well equipped to meet them head-on.


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Procter & Gamble, Gilette, Pampers, trademark, Deborah Brincat, digitisation, INTA17

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