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White Paper

Key Tips for Managing a Global Brand

This white paper looks first at how to register and use a trademark or design properly. It then focuses on how best to enforce IP rights, and finally offers some practical tips to make the life of a brand owner a little bit easier.

Tips on registration

  • Make sure you register your mark properly – do not forget word marks and device marks that should be registered separately, and consider whether combinations of word and device marks should be registered. It may sound easy and straightforward, but many trademark owners do not get their strategy right from the start. As a result, at a later stage costly adjustments to the portfolio become necessary. Renewal budgets can also be lower if your portfolio is properly built up. Get it right from the start and it will pay off in the long run.
  • Make sure you register your mark(s) for all the goods and services you use or intend to start using it for. For the class description, the same applies as for the decision on what to register and what not to register: get it right from the start. Think about the right wording for the classes. It may sound convenient to use standard class headings, but in many countries these are not easily accepted and need further clarification (eg, the United States, Canada, Japan and South Korea). European case law (eg, the IP TRANSLATOR case) also implies that you should be specific as to what products and services you seek protection for.
  • Do not forget the Community design registration. Although available for a limited number of years, it can be a useful tool to register logos and designs. Costs are low, no distinctiveness is required, there are no opposition proceedings and it has a relatively short turnaround time.
  • Keep track of your copyrights and have agreements in place with third parties (eg, marketing and advertising agencies and freelance designers).
  • Register a well-known trademark claim where possible.
  • Register your trademark in the countries where production takes place. Export is often seen as use of a trademark, so registering in production countries may prevent customs cases and problems with third parties claiming rights in your trademark. Once a third party has registered your brand in bad faith, it is difficult to get it back, even if legally you are right and the other party is wrong. Practice is often more complicated (and frustrating).
  • Register your licensee(s) in the registers. This is often not a priority. Set some of your budget aside so that the financial pain feels a bit less severe.
  • Do not forget domain names. Ideally these should be the responsibility of the legal or IP department, but it is often the IT department that handles domain names. Frequently, trademark owners do not even know the contents of their domain name portfolio.

Tips on use

  • A simple tip that is often forgotten or neglected is to use your trademark in the way in which it has been registered.
  • Use ®, © and TM where and when appropriate – they are simple and cheap tools that are often forgotten.
  • Another simple tool that is not (yet) obvious to trademark owners is to keep your evidence ready. Ensure that the marketing and sales departments know that they need to keep track of use of the trademark.
  • Do your homework: keep track of use requirements in the various countries where your mark is registered. Do you need to use it within three years (China) or five years (the European Union and the United States) after registration, or after the filing date (Philippines)?
  • Use token sales and advertising where these are accepted as valid use (eg, India, Indonesia and Hong Kong).

Tips on enforcement

  • Enforce your rights to prevent dilution. Letting it go for too long or not being prepared to spend your budget on protecting your brand will harm the strength of your brand. Think well before you act, but do so if it is necessary. Being too sloppy will only invite infringers to choose your global brand to copy; they know you will not act.
  • Be practical: sometimes it is best to accept use of a trademark, but to keep the register clean. Is there a possibility to settle the issue? Then go for a settlement agreement. Could the infringing party become your customer? If you are practical about such issues, it will save you time and money.
  • First, consider whether you are really willing to ‘attack’ an infringer and to take it further. Is this infringement really a risk or a problem on the market? Be careful when you are sending a cease and desist letter to scare infringers. If you are not prepared to follow up, do not take action. Shooting from the hip may result in being unable to rely on your trademarks after a couple of years simply because you have accepted the infringement for too long.
  • Be strict and act when counterfeit products are concerned. Counterfeit products damage your brand, reputation and sometimes even your customers’ health, so there can be no compromise where such products are concerned.
  • Join forces with competitors, as often actions against infringers can be initiated together. This will reduce costs while giving the action more impact than if you were acting alone. Do not feel too proud to ask your competitors for recommendations for lawyers or investigators whom they are using.
  • Use tools to monitor the web. In addition to domain name, design and trademark watch tools that monitor the registers, there are now plenty of tools that watch the Internet for you and flag up infringements. These save you time and are worth the investment.

Tips on portfolio handling

  • Promote your brand both externally and within your organisation. Make sure that as many departments as possible are aware of the need to flag up possible infringements and to keep evidence of use ready. People in the marketing, sales and finance departments will have no idea why you ask them questions. Giving them training and more information will make them more willing (and perhaps even enthusiastic) to help you out.
  • Establish a written IP policy. Having your organisation’s principles of IP protection written down will make it easier to share them with colleagues and to keep track of your plan yourself.
  • Enjoy managing your global brand! Brands are everywhere and are important in many people’s lives, so enjoy being part of a successful brand.

zacco_wp_key_tips_for_managing_a_global_brand.pdf