WIPR webinar: Maximising the efficiency of your IP portfolio
Companies should maximise the efficiency of their IP portfolios through data verification and rationalisation of products, according to brand lawyers.
Alessia Parassina, a lawyer at IP services provider Brandstock and Federico Rizzo, general counsel at Diadora delivered their insight during a joint webinar in partnership with WIPR on Tuesday 8 May.
The webinar, titled “Maximising the efficiency of your IP portfolio”, explored best practice approaches to IP portfolio management.
Data verification
Parassina said being cost-effective is one of the key concerns of portfolio management.
One way in which companies can save money on their trademark portfolios is by carrying out data verification projects.
Data verification is a means of detecting and analysing the information a company holds on its portfolio, and how precise it is.
This includes the details of the trademarks it owns, including where they are registered, the goods they cover, their status, and application numbers and registration numbers.
Parssina said data verifications are vital because in her experience, “changes which occur during a trademark portfolios life are not always recorded properly”.
“The less these updates are done, the worse the...risk to rely on the information included for any operation or project,” she said.
One risk for portfolio management is when there are a multiplicity of people working on updating the portfolio.
“Whenever a portfolio changes hand, the person responsible changes and the way of entering the data changes too,” she said.
An example of this is how renewal dates of trademarks are entered. For example, one person may enter a date, whereas others may enter a specific time.
Maintaining a correct database is also important for companies when they wish to sell a portfolio.
“The more you can rely on correct information, the better it will be to sell,” she said.
Brands should verify their data by comparing it with online databases, such as that of the UK Intellectual Property Office and European Intellectual Property Office (EUIPO). In some countries, where databases do not exist or can be hard to understand, such as in China, companies should work with local agents to verify information.
But, Parssina said some form of discrepancies are normal and also unavoidable. For example, some portfolios have existed since as early as 1865.
“In more than 150 years, trademarks,data and ways of entering data have changed,” she said. Additionally, there are differences between how trademarks are registered between jurisdictions and there is always some human error.
“If you apply all of this to a portfolio that is made up of 10,000 marks, it may not be perfect,” she said.
Rationalisation
Fredericco Rizzo, said that when he joined Diadora in 2014, the brand had 600 trademarks in its portfolio. Five years on, it has downsized to 570.
He says the first job he was tasked with was to rationalise and assess which trademarks were no longer needed by the company in a bid to cut down costs.
“The real challenge is to cut down on expenditure but improve the efficiency of the IP portfolio without depriving the portfolio of its whole value,” Rizzo said.
One way Rizzo did this was to abandon trademarks which were no longer in use, saving on renewal costs.
As Diadora’s portfolio is 70 years old it can be difficult to rationalise a portfolio with that much history.
Rizzo said brands need to regularly run checks on whether its trademarks are obsolete, but also how consistent its trademark portfolio is with its business.
For example, brands may want to sell non-use trademarks. Or, if a brand has a distinctive set of marks it has not been used in a while, it may want to create a limited edition collection to boost the use of that mark.
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