Nadaline Webster, director of content at TrademarkNow, lists the main challenges facing in-house intellectual property lawyers.
Over the past few years, the value of intangible assets like intellectual property (IP) has risen dramatically. It is estimated that those assets now make up approximately 76 per cent of a company’s value.
That, combined with the need for in-house counsel to play a stronger role in helping their organisation to achieve its strategic goals, means that those charged with safely creating and protecting the brands that drive revenue are feeling the pressure.
The management of IP strategies is an increasingly complex (and expensive) matter. For those whose legal departments are based in the UK, an additional set of challenges has presented itself. While some of those challenges are driven by shifting European political circumstances, others are influenced by how small the global consumer world has become. Improved harmonisation of trademark registration systems seeks to cater for the globalisation of the marketplace and rising adoption of legal technology brings its own challenges.
Here are the five main IP challenges facing UK businesses, and what they mean for in-house counsel.
Amongst the tangle of complex questions raised by Brexit are those affecting the validity and enforcement of trademarks registered with the European Union Intellectual Property Office (EUIPO) since the UK joined the common market in 1973.
The unitary system means that a European trademark (EU TM) enjoys protection in all member states, regardless of the regions in which the organisation does business (although the number of regions required to satisfy use requirements seems to be a subject of some debate). For UK companies which use trademarks in commerce in multiple member states, strategic decisions will need to be made.
2. Portfolio management systems
While the strategic decisions that need to be made will be influenced by executive policies formed during Brexit negotiations, the resulting administrative workload has revealed a significant difficulty with many portfolio management systems. The number of registrations that may need to be reviewed, cleared for additional national registrations and monitored in a way that may not have been done previously, may well be unprecedented.
Standard portfolio management tools are not designed to manage that type of workload at the volume and speed required, and many in-house counsel are turning to newer, more innovative, technology-assisted tools to help avoid the expense of outsourcing this work.
3. Trademark clearance will become more international
When Brexit negotiations have been concluded, the UK will no longer be part of the EU, but will still be a party to the Madrid Protocol and be able to avail itself of international registrations in many regions.
The benefits of this system are numerous and varied, but everything comes at a price. The priority rules permit a trademark owner to claim a priority right on their national registration for a period of six months when seeking registration in other regions. In practice, this means that the registration of a new UK trademark could be challenged by an existing registration designating the UK under the Madrid Protocol. As the volume of these challenges grows, increasingly, clearance searches for more valuable brands will need to be conducted across a number of regions, even if the intended region is domestic only.
4. Do more with less
The ‘do more with less’ instruction has become a mantra around the globe, and IP professionals are not exempt from it. Increasing and demanding markets, continued innovation, faster speed to market, more competition and rising infringement affecting the bottom line often meet bigger workloads, less staff and less budget coming the other way.
Many of the available tools to manage IP aspects of an in-house counsel’s workload require a great deal of manual work and hours of repetitive tasks. Selecting the right tools can help in-house counsel to achieve more within their existing budgets, as well as helping them to create additional value for their department in the wider business.
5. Getting more creative
Social media can be a phenomenally powerful tool in building your brand, when used by happy customers to sing your praises. When they are not so pleased with your service, it can have a negative effect. But it can extend further than that.
Smaller businesses which have been on the receiving end of cease-and-desist letters have shared these on social media, with those companies sending those letters trying to prevent infringement of their brand coming in for condemnation. On the other hand, a cease-and-desist letter issued by the in-house counsel at Netflix recently went viral. Its friendly tone and creativity was widely praised as an example of how these things could be done, illustrating a need for lawyers to think more creatively about how they approach issues to avoid accusations of bullying.