27 October 2017Trademarks

WIPR webinar: Brandstock talks transparency and overcharging

While agent fees can fluctuate from company to company, one thing should not change—official fees at IP offices, a WIPR webinar co-hosted by Brandstock heard.

But unfortunately this does happen, according to Alessia Parassina, a lawyer at the IP services provider.

She was speaking during a webinar hosted by WIPR and Brandstock, called “Saving money immediately on your IP assets: Auditing your trademark portfolio”, yesterday, October 26.

“The more benchmarking projects we did, the more we realised that some agents, not all but quite a few, were overcharging and putting a buffer or exaggerating official fees,” she explained.

Brandstock conducts data verification for trademark portfolios, helping clients to save money on them.

The process verifies information on the trademark, its actual owner, address, list of goods, status, application number and date, registration number and other data.

“The less well kept your portfolio is, the more you risk,” she said, giving the example of thinking you have coverage in US, but you don’t because you didn’t submit a declaration of use.

According to Parassina, there are four steps to rationalising portfolios: eliminating redundant marks, reducing the number of national marks registered in EU member states by claiming seniority in the EU trademark, proactively selecting where renewal is necessary, and widening to new filings in areas, countries and classes which are deemed necessary.

Angela La Marca, IP counsel at OTB, the parent company of Diesel and other fashion brands, also participated in the webinar.

She explained that OTB created a consolidated IP department some years ago, developing a uniform policy for all its brands.

OTB then embarked on a benchmarking project to rationalise its list of IP external counsel. In doing so, the company expected to save between 10% and 30% of the total IP annual spend, and this is currently on track.

Guido Chiavelli, the CEO of children’s clothing company Il Gufo, outlined the history of his company.

As a smaller company, it does not have an in-house legal officer so it has outsourced for many years, in order to ensure that “every time we have a new market to open, a new agent to collaborate with, we are fully covered and perfectly managed”.

Click here to listen to the webinar.

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