Watch your marks: GSK’s global approach to protection

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GSK employs about 1000 lawyers, 14 of whom permanently guard the corporation’s trademarks. Georgina Evans, vice president and trademark counsel discusses GSK’s trademark protection regime with Edward Fennell.

Everything about GlaxoSmithKline (GSK) is giant-sized. With 7% of the world’s pharmaceutical market, the corporation’s speciality is being big in everything that it does. You might almost say that massiveness is its trademark.

Certainly it was the need for ‘scale’, in terms of research, development and sales muscle, which drove the creation of the corporation back in 2000, when Glaxo of the US merged with the UK’s SmithKline Beecham. Now, four years later, sales are worth over £21 billion (US$38 billion) a year; profits are an incredible £6.7 billion (US$12.4 billion); the total number of employees is 100,000; and the number of scientists working on research and development exceeds 16,000.

So what impact does this have on the corporation’s trademarks? The numbers, by most standards, are extraordinary. The corporation has registered an impressive 110,000 trademarks and it spends £1.5 million (US$2.8 million) each year on renewing them. One of the key people responsible for overseeing this empire is Georgina Evans who heads up the Pharmaceutical Europe Trademarks Team.

Georgina – or Georgy as she is known to colleagues – is one of five managers in a team of 14 trademark attorneys in the US and UK. Formerly a solicitor with Linklaters, Georgy trained as a registered trademark attorney before joining what was then SmithKline Beecham in 1996.

The GSK approach to trademarks
When discussing trademarks, Georgy places emphasis on the practical, business-based approach she and the corporation have developed in dealing with its enormous trademark portfolio. Just because the budgets are big, there is no excuse for copper-plating the legal strategy. ‘I don’t do erudite,’ says Georgy firmly. ‘We are driven by business considerations and costs are dear to my heart. We have to work within clearly-defined budgets and, frankly, I’m mean about it. Value for money is critical and everything we do needs a commercial point.’

This no-nonsense approach gives the corporation’s strategy towards protecting its trademarks a very sharp edge. For example, there is no blanket commitment to defend or maintain every trademark. Instead each case is assessed on its merits. ‘You have to ask yourself, is the mark still of commercial value?’ says Georgy. ‘In some industries, certain kinds of marks can easily go out of fashion. In these cases there is no point in maintaining the trademark registrations.’

‘We are driven by business considerations and costs are dear to my heart. We have to work within clearly-defined budgets and, frankly, I’m mean about it. Value for money is critical and everything we do needs a commercial point.’

Developing an integrated policy
Like most large corporations, GSK operates on the basis of well-defined policies and procedures which stem from top level decisions. Hence GSK has developed a policy of IP Rights, which has been set for copyrights, patents and trademarks. These not only define who in the corporation is responsible for implementing the policy, but also determine levels of protection, set geographical spreads, and co-ordinate approaches to clearance and enforcement.

The policy also embodies important principles, which include ensuring that the corporation will not infringe on other companies’ valid IP Rights. The policy also determines how IP Rights should be disposed of and which companies within the group should actually hold their ownership. This last is no simple matter; the map of ownership relationships is ‘three dimensional’ and astonishingly complex as a result of mergers and acquisitions.

Overseeing this strategy is akin to being a commander on a very large and complex battlefield. There are so many events happening, across such a big, international scale with so many options, that it requires tremendous tactical skills to ensure that resources are well used and that the bigger objectives are always kept in view. Indeed, in relation to cybersquatters and comment sites, for example, GSK’s overriding concern is always that over-zealous action might ‘win the battle but lose the war’.

This is why GSK has developed highly-detailed procedures that account for almost every eventuality. In Georgy’s case she is governed by the GSK Global Pharmaceutical Trademark Development Process. These procedures cover timelines for registrations, define team members and their responsibilities, including, for example, the balance of responsibilities between lawyers and commercial managers, and prescribe the details of how trademarks should be released for use in conjunction with product launches. As Georgy explains: ‘A good lawyer will be able to communicate effectively to their commercial management colleagues what is possible in terms of IP law and what the risks are.’

Then procedures also help determine what sort of trademarks are needed, evaluate the importance of components, such as sub-brands, assess the benefits and availability of a global brand and adapt strap lines, into, for example, English or local languages. Other issues, such as how to create trademarks (for example, by use of brand name agencies), pre-screening and gaining input from regulatory advisers are also driven by the procedures. ‘It’s almost like having a body of internal rules,’ Georgy says. ‘Codification is essential. We have an on-going process in which the rules are kept continually under review and are revised when necessary.’

Reaping the benefits
The benefits of following such detailed procedures become apparent when one considers the different sorts of protection different organisations offer. Should a corporation, for example, opt for registered or unregistered trademark protection along with EU design and copyright protection? Each available option and the protections they offer have to be measured against a number of key criteria.

As Georgy points out, rights, in theory, are not mutually exclusive. But in working their way through all the options, Georgy and her colleagues consider all the pros and cons – for example of national versus community trademarks – and come up with the most pragmatic, commercial solution.

With a strong policy and procedures culture, Georgy Evans believes the risks of inadvertently undermining valuable IP Rights can be reduced: ‘It’s hard work protecting IP rights properly,’ she says. But clearly such efforts are not wasted.

For more information about GSK visit www.gsk.com. Georgina Evans is now Head of Trade Marks at Shell International.

This article first appeared in IP Review, issue 7

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