In-house IP teams should be relied on to manage trade mark portfolios through uncertain times.
Geopolitical upheaval and related economic woes have continued to dominate the headlines through early 2023. With inflation and interest rates still high, the outlook remains uncertain.
To help in-house IP professionals deal with this issue, Group Head of Trade Marks Rachel Tan and Principal Lisa Yong at Rouse have identified three key principles that IP professionals should observe.
1. Make data-driven decisions
Data is here to help us – not to replicate or replace us. An economical downturn is exactly when you need to be going to your business decision makers to show them discoveries based on immutable data.
Most experienced in-house trade mark counsels understand that each region has its own nuances and there is no one-size-fits-all approach. During a downturn it’s especially important to be guided by proper metrics and forecasting that take these differences into account. Look into the regional data, spot the trends, and adjust your activities accordingly.
2. Revisit strategies in complex jurisdictions
Recently there have been cases of domestic and foreign brand owners that file a large number of trade mark applications which are issued with office actions questioning their intentions for use. Because of this, Rouse has been analysing the rationale and explaining to stakeholders how there is now a greater need to provide evidence of use when making a filing.
The geopolitical shifts currently taking place are increasing the complexity of managing trade marks across geographies. Local markets develop in different ways and trade mark strategies need to be varied accordingly.
Senior leaders should be aware of local complexities and ensure access to people with the necessary first-hand knowledge of Intellectual Property law. When such expertise is not available in-house, steps should be taken to ensure it is provided by the right external partner.
3. Do more with less
A recent report on illicit trade in times of uncertainty highlights how high inflation rates and increased cost of living can lead some consumers to choose counterfeits over originals[1]. Brand protection and enforcement teams may therefore ask for trade mark portfolios to cover more filings in more jurisdictions in order to enforce against counterfeits or lookalike products.
In a downturn, IP teams often turn to technology and outsourcing as a way of doing more with less. Software providers and procurement agencies may offer solutions that appear to be a panacea, but on their own fail to address the complexities of a solid trade mark management strategy. A combined broad approach with bespoke solutions for complex markets is often the answer.
Companies will often focus on purely cutting budgets based on activity types. It may be helpful to understand how market developments fit in with your overall brand-assets strategy. This enables you to make informed decisions on allocating spend to core marks and futureproofing your portfolio. Creating more value with less is where the real challenge lies.
[1] https://impact.economist.com/projects/deliver-change/wp-content/uploads/2023/02/Illicit-trade-in-a-time-of-uncertainty-report.pdf
