Managing your Intellectual Property: Why Trade Marks should always be on the Board Meeting Agenda
One of the most valuable assets in any business is its Intellectual Property but it is often the most neglected. Intellectual Property manifests itself in various forms from trade marks, copyrights, patents, design and domain names, through to licenses, franchises, exclusive distributorship rights and know how and technology. In order to maximise the value of a company’s intellectual property, it needs to be well managed and regularly audited. A formal intellectual property policy should be in place to ensure there are the procedures to protect, enforce and maintain intellectual property effectively. This article provides an overview of managing trade marks within an organization.
The Trade Mark Portfolio
A trade mark portfolio is made up of registered trade marks and unregistered trade marks in use. Trade mark rights may also be derived from licenses, franchises, co-branding and other contracts. Managing these rights is equally important as managing company owned assets.
Additionally, domain names should form an integral part of trade mark management, as a domain name will often incorporate word marks or trade names associated with a business. Domain names can afford a company an exclusive advantage in the online space. By incorporating trade marks in domain names associated with a business, the company can reach consumers and grow its reputation and goodwill in cyberspace.
How to manage your Trade Mark Portfolio
Underpinning a good management system is an Intellectual Property or Trade Mark Management Policy. This should identify who within the organization is responsible for and authorized to develop new trade marks and the proper procedures to follow when new brand names are developed, or existing brands updated. You may want to engage your Trade Mark attorneys to assist in the drafting of the policy.
Generally, the party that files first will have will have priority over a later Applicant so timing is key. Trade marks are also territorial rights, so due consideration must be given to where you plan to use the mark and ensuring its availability. Advanced consideration of important jurisdictions to obtain upfront protection is a good strategy, instead of trying to obtain protection after a product launch.
Trade marks also need to be renewed every 10 years. In conducting an annual audit, marks due for renewal can be identified. Updating of logo trade marks to reflect current usage is important as this may impact on your ability to enforce rights. A minor change may only require the trade mark to be amended whilst a completely updated look will usually means that the mark needs to be re-filed. Trade marks which are not in use may become vulnerable to cancellation, and by conducting annual audits, these risk areas can be effectively identified and managed.
Protecting your assets
Whilst protecting your trade mark rights commences with securing protection, it is equally important to enforce these rights against infringers and counterfeiters. Steps to be taken in achieving effective enforcement of trade mark rights include, monitoring competitor activities, market place surveillance, monitoring trade mark gazettes, journals and company name registrations. When conflicting trade marks are encountered, a proactive strategy should be adopted to address the offending party. It is also important to monitor the internet to check for online trade mark infringement or cyber squatting.
As part of the auditing process, a company should also ensure its trade marks are used properly, and not allowed to become generic. Examples of trade marks that have been become generic due to the manner in which they were used include escalator, aspirin, catseye, thermos and trampoline to name but a few. An internal guideline on trade mark usage through a corporate identity or brand identity manual is recommended. Registered trade marks should always be marked with a symbol whilst unregistered trade marks can be denoted by the use of the ™ symbol. Marking and labelling requirements may vary from country to country so due consideration should be given to this if locally manufactured and packaged goods are to be exported. If you encounter any generic or improper usage of your trade marks, it is recommended to nip this in the bud by taking appropriate action and monitoring the market to ensure this does not continue.
To conclude, part of good corporate governance and the duties of directors is to ensure company assets are protected and maintained – does your company tick this box when it comes to its intellectual property?