TomTom, the Netherlands-based navigation solutions supplier, sold its 10 millionth product in May 2007, making it one of the major players in a hugely competitive sector. Head of IP Peter Spours and head of IP creation Jacob Eisenberg explain to Ben Whittaker-Cook how TomTom's IP philosophy is steering the company in the right direction

Few companies can boast to have reached a turnover of over one billion Euros without borrowing a single dime, and yet TomTom, manufacturer of Europe’s trendiest standalone in-car navigation systems, has done just that. Indeed, the growth of the brand is such that TomTomGo has already cornered a 50% market share in Europe, as well as making successful in-roads into the US market. The company’s handling of both its technological innovations and its branding (TomTom was recently voted as a CoolBrand by YouGov’s annual survey of the coolest UK Brands) has driven this success, and yet, surprisingly, IP was far from a priority when the company’s first product hit the shelves in the summer of 2004.

Keeping up with the speed of innovation
Any company that experiences growth in such a short space of time, can leaves gaps in other areas of its business. That includes IP, and that is what happened to TomTom: ‘IP is not the most important consideration for a new company,’ says Peter Spours. ‘Every dollar you have is spent on marketing, so you end up with companies becoming successful in the market without really having thought about IP. That picture is no different for TomTom as it was for, say, Cisco, or a whole variety of other technology companies.’

One of the harsh realities of business life is that a company only wakes up to the importance of IP at litigation time. In the case of TomTom it was the 2006 Garmin litigation (the US-based competitor Garmin is calling for unspecified financial damages in their claim that TomTom is illegally using several US-patented Garmin technologies).

‘It’s no secret that at that stage TomTom owned no patents whatsoever, and suddenly it was faced with a US litigation. The first thing the company had to do was to go out and buy some patents in order to have something to countersue Garmin with. But we’re a more “grown-up” company now. You know that patent disputes are going to happen – you just never know which one is going to hit you. You can predict to a certain extent but that’s the nature of doing business, particularly in the consumer electronics sector,’ Peter says.

Now TomTom has protected 30 domain names and 400 worldwide trademarks and patents. ‘Both Peter and myself were brought on board in late 2006 to address TomTom’s IP needs and to protect its innovation,’ adds Jacob Eisenberg. ‘We have separate functions and roles, but our tasks overlap and we work together to handle these tasks because in terms of IP, things can’t be fitted neatly into a box.’

Developing the brand
TomTom has a dedicated team of IP professionals to cope with an ever more demanding workload. The London, Amsterdam and Taipei offices contain legal  administration staff and anti-piracy specialists, while experts are distributed throughout its worldwide research and development centres to help mine for inventions. TomTom has in-house patent drafting capability, but still relies on outside counsels for some of this work.

ONE OF THE HARSH REALITIES OF BUSINESS LIFE IS THAT A COMPANY ONLY WAKES UP TO THE IMPORTANCE OF IP AT LITIGATION TIME. IN THE CASE OF TOMTOM, IT WAS THE 2006 GARMIN LITIGATION

It has also invested much emotional and practical time into developing its brand. Through a continual series of workshops, all employees at TomTom are given a good grounding in the importance of IP, so brand protection and other IP issues become company issues.

According to Jacob, the ‘cool’ brand thing is something that TomTom works hard on. ‘What we try to do is to incorporate marketing and sales at all levels wherever possible. Getting those departments, for example, involved in the heavy legal stuff can help make it market and sales friendly. By speaking in a uniform way we can
protect the value of our trademarks in the marketplace, so that TomTom doesn’t go the same way as 'Aspirin' or 'Elevator'.

‘The important thing is to just get involved and get out there and bring people together around a table and make sure that the legal aspect, and especially the IP aspect, of what sales and marketing are doing is respected and implemented.’

The philosophy is simple enough: the IP process becomes a company process. ‘We are almost the glue between innovation and the marketing team,’ interjects Peter, ‘and we have a pretty much integrated legal department. The whole legal team is involved in everything that is going on in the company. I have seen companies where that doesn’t happen, where the IP team sits in a corner office somewhere and builds up a pile of patents and nobody is quite sure who they are, what their role is or why they’re doing that. It is completely different in our operation. We know exactly why we’re doing it and the business knows why we’re doing it.’

The pair stress that they don’t see themselves as corporate policemen – the one thing they don’t want is to stop the level of innovation that’s going on in the business. ‘What we hav to do is keep that innovation going, but provide it with a little bit of legal guidance and direction,’ says Peter.

The average age of TomTom’s workforce is under 30, and the majority are first-jobbers. That makes for a steep learning curve in terms of making them aware of the business culture and the crucial role IP plays.

In June 2007, TomTom added all the patents from Horizon Navigation Inc to its patent portfolio. ‘Because we are a young company, we don’t have an IP history,’ explains Peter. ‘Horizon has done a lot of learning in developing those early products. We now have that IP history, backed up with new innovation, which gives us a much stronger position in resisting any claims made against us and protecting our business overall.

‘Patents exist to defend our business and defend ourselves against claims that are made against us by other patent holders,’ concludes Peter. ‘We are great believers that competition should happen in the marketplace and on the high street. Competing in the courts is not the way we want to do business.’


This article first appeared in IP Review, issue 19

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