21 May 2016TrademarksAllan Poulter

Bird & Bird: a holistic approach to trademark management

Why should companies consider having their trademark portfolio managed by a law firm?

A holistic approach towards brand protection goes a long way to ensuring your brand works hard for your business. The management of a trademark portfolio should not be conducted in isolation. The filing and prosecution of trademark applications is just one aspect of the broader brand management services that a law firm can provide alongside contentious matters, including litigation in the courts, and legal services relating to the commercial exploitation of brands.

Law firms like Bird & Bird can provide this holistic approach to brand protection through a dedicated team that works closely together to ensure that filing strategies effectively reflect the business objectives of the client and underpin any enforcement/commercialisation strategies.

What makes Bird & Bird stand out from the competition?

One core aspect of the Bird & Bird practice is the strength and depth of its IP expertise, and the geographical coverage of the offices in which this expertise can be found.

We not only have the range of expertise across the full umbrella of IP, but with more than 300 specialist lawyers across 28 offices in key countries within Europe, Asia and the Middle East, we have numbers in force. We focus on quality, and the lawyers we hire or work with need to be the best in their field.

We continue to work on some of the most complex and challenging trademark projects, most recently in relation to brands affected by the borderless nature of the internet. Many lawyers who join us mention they have faced more ‘exam style’ questions than they have ever had at any other firm.

Given the global nature of the internet (where most businesses have an increasing presence) it is essential for companies to take an international view of their brands rather than a piecemeal jurisdiction-by-jurisdiction perspective—Bird & Bird offers that in one place.

What are the most common mistakes companies make in managing their trademarks?

Traditionally many companies have treated the filing of trademark applications as a necessary evil rather than an essential element in protecting one of the most valuable assets of the company. Historically, trademark agents and attorneys tended to be reactive in that they would merely implement instructions received from a client without offering any proactive or strategic advice. Most companies do not conduct frequent audits of their portfolio and, particularly where growth has been through acquisition, this often results in portfolios that are fragmented and where—in many cases—the registered protection does not accurately reflect the commercial needs of the business.

The management of portfolios is often split between a number of different firms, not only in different territories but often even within a single country. This makes it difficult not only for the client but also for their IP advisers to have a comprehensive oversight of the brand protection requirements of the business.

“It is essential for companies to take an international view of their brands rather than a piecemeal jurisdiction-by-jurisdiction perspective—Bird & Bird offers that in one place.”

This trend seems to be reversing, and in recent years the value and importance of brands appear to be securing greater recognition at board level even within small and mid-sized companies. Trademarks are becoming more valuable due to the increasing online presence of most companies and brands. The prevalence of search engines used to navigate the internet means that word brands are a vital tool for driving traffic to a company’s web presence and therefore driving business for the company—the importance of trademarks cannot be overestimated.

What can clients expect when working with Bird & Bird’s trademark team?

The Bird & Bird international trademark team is made up of some of the world’s leading trademark lawyers and specialist paralegal support teams. The portfolio management lawyers work closely with the enforcement specialists to ensure that any advice given on strategy will address all the relevant needs of the client in terms of its brand protection requirements. Clients can expect proactive and commercial advice. We do not have a one-size-fits-all approach, but prefer to tailor the way we work with clients to match their specific requirements.

How can companies be sure that Bird & Bird is the right partner?

We pride ourselves on establishing long-term relationships with clients which, for us, is the greatest testament to the quality of services that we provide. Objective recognition and verification of the quality of Bird & Bird’s services in this area can be found through the consistently high rankings that the firm receives in international guides/publications. Bird & Bird consistently has numerous individuals recognised as leading trademark law practitioners across several jurisdictions.

What does Bird & Bird offer in this area that a traditional law firm can’t?

As a partnership across all of its international offices, the trademark team at Bird & Bird is able to collaborate effectively to ensure that clients receive the best advice and consistency of approach and delivery. The reputation of Bird & Bird in the IP field is such that only the best trademark practitioners will be recruited, ensuring that the advice given is of the highest calibre. At the same time, Bird & Bird understands the need to be competitively priced without compromising the quality of the service provided, particularly in areas such as trademark and design filing, clearance and renewals.

In addition to the leading IP practice, we also have the leading international franchising practice which puts us in a unique position to be able to provide clients with the support they need when developing and implementing an international expansion programme.

However, it is not just that the firm can offer outstanding service in the trademark field, but in many sectors trademark questions arise in conjunction with regulatory, contractual or other legal issues. As a full service law firm, we can provide the full range of legal services required by our clients and we act for many of them across multiple legal disciplines and geographical boundaries.

Allan Poulter is a partner based in Bird & Bird’s London office and has experience as a barrister, trademark attorney, solicitor and of working in-house. His expertise includes all aspects of brand management, protection and enforcement with a specific focus on portfolio management, legal clearance searches, contentious registry proceedings, and advising on global branding strategies. He can be contacted at:

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