By Jayne Durden ‑ May 23, 2017
On May 20th more than 10,000 trademark specialists and IP professionals arrived in Barcelona for the 139th International Trademark Association meeting (INTA).
I’ve been attending INTA for many years and always look forward to catching up with my many professional friends from around the globe, as well as the opportunity to attend – and moderate – best practice table topics. Here are my thoughts on how a law firm can make the journey from trademark strategy to successful implementation.
How has the role of the trademark lawyer changed?
Trademark lawyers used to occupy a legal and prosecution role – but a 21st century trademark lawyer has to do much more. Day-to-day tasks are now increasingly focussed on informing a business strategy and driving better business decisions. This is great news for the IP industry – now poised to take a more central role in business development – but it also means that trademark lawyers are busier than ever. The digitisation and globalisation of business is challenging trademark lawyers to find the time and resources to manage all areas for infringement, such as domain names and social media.
Those of us in the industry are now in a position to reassess our law firm trademark strategy, ensure that it is fit for purpose and analyse how strategy can be made reality.
What is the best practice for creating a trademark strategy?
It is important for law firms to remember that one strategy does not fit all circumstances. Trademark strategy will differ depending on a number of criteria, such as the size of the law firm or company, industry it operates in and its position within that industry. Any trademark strategy that is not directly related to an organisation’s company strategy and current circumstances is bound to fail. Although, one thing always remains constant - trademark strategy is about a balance of people, processes and technology.
For the trademark specialists working within corporations and law firms, there are three essential resources to help with a successful trademark strategy: legal resource (either in house or external); administrative resources (either in house or bought in) and technology. Every successful trademark strategy will be an implementation of these three things.
Does technology have a place in trademark management?
Technology is a facilitator that will enable trademark professionals and law firms to work more effectively – not replace them. Reluctance to implement the most efficient processes are always going to be counterproductive. Technology is making it easier for law firms to carry out time intensive tasks, implement simple screening for trademark clearance, deploy watch tools that monitor new trademark applications for infringement or identify domains and social media properties that might impact trademarks.
With The IP Platform from CPA Global, even day-to-day tasks such as filing and renewals can be automated. The IP Platform ensures that law firms only need to carry out tasks once to generate trademark applications in all jurisdictions. This kind of technology is transformational, rapidly reducing administration and paperwork and empowering law firms to deploy their own working methodologies within technology platforms.
If you’re at INTA this year, come and join my table topic: Compare & Contrast - best practices for managing a global trademark portfolio. I’d love to meet you!
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