19 October 2020TrademarksElena Galletti

Five minutes with Elena Galletti, Brandstock

What is the best way for corporates to justify to management that you need to spend money on IP at the moment?

What I would suggest at the moment is to analyse the strength and coverage of the portfolio to see if there’s a basis to rationalise and optimise it. There are some actions that are easy to take, but it may be difficult to do it yourself because you work day-to-day with your portfolio. This is where it’s useful to have someone from the outside to jump in. It’s difficult to do it in-house because you have all the regular daily tasks. We have been proposing this analysis for years and many companies have decided to “test” their portfolio with us. Some corporates immediately understood the rationale and did it, while others were reluctant. This attitude seems strange to me—maybe it means they’re not under pressure or are not worried about it, or perhaps they have a very strong relationship with their agents worldwide or with a different law firm/service provider, and the benefits that come with that.

Especially in this particular period, we all have a responsibility to do our best to optimise and make our processes more efficient, but certainly not every company is doing this. Many companies are still working in an old fashioned way with lots of people involved in the management of the portfolio, old processes in place, no clear reporting. There might be different reasons why they don’t want to change (or they cannot change), for example because they want to keep trade secrets in-house or because they just want to keep everyone involved. But the trend is now to outsource services that are not strategic, because an external provider has experience of other companies and industries, can suggest different points of view, and can challenge the status quo. I think new challenges are always bringing new opportunities and a fresh approach to the usual attitude of “we have always done things in this way”.  Outsourcing means the resource is always flexible and available. You remove the risk of having one person internally who is on holiday or on leave and there being no back up.

Are more companies outsourcing during the pandemic? What should be the primary considerations?

Yes, they have to outsource more, and not just on IP. If they have budget pressure, of course cost is important, but it’s also clear that they need to do more with less: they need a consultant who knows the business and can provide the best (short!) opinion, straight to the point, taking some controlled risks. The era of the conservative lawyer is over.

That said, one trend we’re seeing is that instead of filing lots of new trademarks, some companies are looking back through their portfolios and repurposing old marks that they may not be using. We think companies will look more and more to their own portfolio when trying to find new trademarks. They will try to license marks too, and I think companies will start to look to sell assets— IP brokerage will become more important in the next few years—probably a nice platform will launch with brands broken down by class, country and so on. I don’t think the prosecution costs, both in time and money, that we’ve seen in recent years are sustainable.

There are companies with more than 10,000 trademarks in their portfolio and they are using only about 30%. Often, they keep the others because they have a vague idea they may use them again, or to stop competitors using them. But hopefully more legal departments will encourage their marketing or branding teams to look into an existing portfolio when trying to develop a new trademark. Of course, this is more relevant to big companies.

What other things can IP departments be thinking about that can create value for a company at the moment?

They have to do a rationalisation project—they need to sit down with the other departments in the company and consider what is fundamental, what is nice to have, and what is nice to forget. If you work every day with the same portfolio you don’t necessarily know what is most relevant and what is not. They need to step out from the day-to-day work and ask themselves if this is really an efficient way of working (and also, whether it is exciting). There may be many other ways of dealing with things that have become routine. There are still departments that take care of renewals internally, for example. This is a really repetitive, not difficult task and it’s a waste of an employee, who may get bored and is not bringing added value to the company. I think the role of the in-house counsel should be enhanced: from a basic role of “paper pass” to a holistic role of brand authority guard. This is possible only if the counsel is not charged with repetitive and administrative work and has the possibility to evolve a strategic approach, focus on priorities and efficiency.

How have you responded to the new situation as a company?

We have made specific agreements with some companies which were highly affected by the crisis; in some cases we decided to postpone some projects. With some clients we proactively suggested changes to their ways of working. For some, we established different ways of reporting and different ways of looking at their portfolio. Clients don’t want us to “be” the standard lawyers—they want a straight, fast answer on their questions, and they want us to take some of the risks too, considering the business and the specific goals. Some realised it was time to change, and we are happy to be a promoter of this change.

Is this situation an opportunity for corporates?

I expect companies will think more about what they are doing. It sounds really obvious, but in the “previous” world we were all running all the time, doing activities. And especially in IP, many people were working in the same way as they had for the past five years. This has changed with COVID. Everything was changed. So, this is a good occasion to reflect on what we do. Instead of working in front of a laptop for eight hours doing the same activity, perhaps now we can work five hours and spend three hours thinking about how to do things better. You might be able to change how you operate, whether that be outsourcing instead of buying software, or exploring flat fee arrangements with your agents. Hopefully it will allow people to think more about what is the best way forward for the company. I heard a great TED talk a couple of weeks ago saying we always think about “how” we do something, but we don’t spend enough time thinking about “why” we do something. For us the Why is about acting like proactive colleagues for our clients — we’re not just the people who do the work for them—we’re the people who suggest different ways of doing things—we think together with our clients about how to do things differently, and simultaneously, we want to achieve the goals they set without just cutting all the time.

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