Bookmark and Share

The Essentials of Managing a Worldwide Trademark Portfolio

Issued: May 11 2014

As it is known that both in-house and outside counsel share a tremendous amount of responsibility when tasked with managing trademark portfolios for multinational clients in this ever-expanding global economy, INTA gathered such trademark attorneys to share their stories and suggestions for best practices.

In terms of creating a brand development strategy, Visa offers training, policy (e.g. confidentiality agreements) and processes for its employees. "Employees would also need to ask clients if they really need to apply for their names, because many of them are in the financial services sector and the names are often descriptive. If the names are descriptive, they do not need to be applied. For example, we have Visa commercial cards, Visa business cards, etc but the key part is Visa so all other variants do not need to be applied," says Denise Yee, associate general counsel, trademarks at Visa International.

Fédération Internationale de Football Association (FIFA) registers its event marks be it emblem, logo, poster, slogan, mascot, trophy, look, etc, enthusiastically, says Daniel Zohny, legal counsel/group leader intellectual property at FIFA in Zurich.

After registration, "enforcement is critical," says Thomas Zutic, a partner at DLA Piper in Washington, DC. "We must get strong protection for core marks and meanwhile, be sensitive to time and costs in order to minimize the financial risks associated with the use of the marks."

Despite being sensitive to costs, "multinational corporations must always focus on global protection from day one," Zutic adds. "Attorney's role is to encourage clients to think long-term and also, most jurisdictions are first-to-file, so it is key to obtain rights in those places efficiently."

To maintain the well-being of a global trademark portfolio, in-house counsel from different companies tend to handle it differently with various amounts of resources.

For example, "FIFA tends not to handle renewals itself, although it does audit about 1,000 marks annually," says Zohny.

On the other hand, Visa tends to handle all by itself, with external help, says Yee.

Besides renewals, docketing is vital, Zutic says. "Without good docketing, it can be a disaster, so we would have monthly, weekly, and even daily reports."

As for trends of infringement, there has been a rise on social media platforms and as mobile devices are prevalent nowadays, more infringements have now been observed in mobile apps, Yee notes.

The session titled "The Essentials of Managing a Worldwide Trademark Portfolio" was held at the Hong Kong Convention and Exhibition Centre on May 11, 2014 with approximately 100 attendees.