A trademark or service mark is closely associated with the stability, and profitability of the business for which it is used. For the best possible results, the trademark or service-mark of a company must be unique in the concerned market, its reputation should not be harmed by an infringer through making unauthorized use of the trademark for selling the same or similar goods or products. Thus, to manage all the filing, renewal, registration of the trademark companies need trademark portfolio and it is important to manage it to protect it from the infringement.
TRADEMARK PORTFOLIO MANAGEMENT
Trademark Portfolio Management (TPM) is the efficient and strategic management of the registration, infringement, litigation etc. types of services related to the trademark or service mark. This type of management enables a company to keep the business related to its trademark secure and profitable. This type of trademark portfolio management service usually involves responsibilities at a strategic, legal, financial level. The trademark portfolio service consists of, not only the monitoring of the maintenance strategy and advice on the internationalization of those trademarks. It also enlists the measures to provide trademarks with maximum protection.
BENEFITS OF PORTFOLIO MANAGEMENT
- The trademark must be renewed punctually and protected rigorously in the relevant jurisdiction. Thus, by maintaining a portfolio it is easier to keep a record and maintain trademarks which also help in protecting them from prospective infringement. Furthermore, TPM creates a barrier to entrance for competitors.
- Trademark portfolio management allows an effective consultation and maintenance of all the trademarks.
- By centralising the resources, company can take informed decisions regarding the portfolio and have the opportunity to be proactive rather than reactive.
BUILDING A TRADEMARK PORTFOLIO
It is essential to build trademark portfolio as it is crucial for maximising and protecting the company’s most valuable asset that is its brand. If a trademark portfolio is not properly built, the company may face an increased risk of infringement claims and many other issues. There are crucial steps to build a trademark portfolio which are as follows-
- Conducting a trademark search of legally protectable mark:
There are certain steps to follow for choosing a strong trademark to legally register. The company should choose a trademark which is easy to speak, spell, read and remember and at the same time non identical, non-descriptive, non-geographical, non-scandalous. After choosing a trademark the proprietor should check the availability of the mark at the IP portal of government, if it’s available, the company should proceed to the next step.
- Registering legally available trademark: To proceed with this step the applicant should collect the documents such as logo or brand name that is to register along with the details about the classes in which the trademark will be registered. The company should also present the power of attorney to authorise a trademark attorney to file for registration applicants behalf. The applicant is required to file these documents with trademark registry office (TRO) either by physical filing or e-filing.
- Monitoring legally protected trademark: This stage comes after the business has acquired the right to use the registered trademark. The monitoring includes-
- Licensing marks to third parties in exchange for royalties or other considerations.
- Monitoring the marketplace for infringement and misuse. (Investigating, action, cyber-piracy, counterfeiting).
- Conducting Trademark audits.
- Expanding or modifying use of existing mark.
- Ensuring that marks are properly used in commerce.
PORTFOLIO REVIEW
Portfolio review is similar to the health check-up of business. Companies of all size can benefit from annual trademark review. Portfolio review involves a review of the company’s business and the way it uses its trademark, compared to a review of the company’s trademark registrations. The trademark which is no longer in need is required to be removed. It is important to conduct a portfolio review for reasons such as, to check geographic scope of use against domestic/foreign registration coverage and to prepare for future expansions. It is also necessary as it helps to confirm compliance with third party licenses, settlement agreements and other agreements. Further, the review helps in identifying the abandoned trademarks and taking necessary action to either pursue them or to remove them. Conducting periodic audits is also essential in managing the portfolio as it helps in ensuring that the trademark owner’s compliance with requirements and deadlines for acquiring and maintaining rights.
TRADEMARK ENFORCEMENT
Trademark protection grants exclusive rights and prevents unlawful and unauthorised use of mark by any third party. Trademark enforcement is important so as to effectively enforce company’s trademark against the deceptively similar or infringing marks. A tailored enforcement strategy is essential to maintain the profitability of a brand. The attorney’s hired for trademark portfolio management should actively look for competitor’s behaviour and efficiently enforce client’s trademark strategy through a variety of means, beginning with the development of a comprehensive and strategic enforcement policy. Role of trademark portfolio management is that it helps in identifying the infringer with regular checks and helps in taking timely action against them.
BENEFITS OF WORKING WITH TRADEMARK ATTORNEY
The benefits of working with trademark attorney for trademark portfolio management is that the company can totally trust the knowledge of the attorney regarding the laws, changing trends and quick response towards any problems that may arise in the future. Further, there are a lot of things that can easily be handled by an attorney like filing and prosecution of trademarks, renewals of trademarks, docketing, portfolio audit and effective enforcement of the trademark rights. The attorney keeps themselves updated with changing pattern of intellectual property which allows the proprietor to benefit from them.
CHALLENGES OF MANAGING THE PORTFOLIO
- It can be challenging tohire or train managers who are well adjusted to trademark management strategy. They should have knowledge of trademarks but as well as should be conversant with the IP strategies of the organisation.
- With the advent of technological era the problems like counterfeiting on online platforms and changing laws can pose serious challenges towards portfolio management. One should remain up to date with these changes to adapt their strategies for managing trademarks.
- There should be a robust and effective trademark watching solution in place to regularly monitor the registries for threatening applications.
- Educating other stakeholders in the business, as well as licensing partners, manufacturers and suppliers on what to look out for is crucial, as is taking quick enforcement action to protect the integrity of trademark portfolio when required.
CONCLUSION
India is a huge competitive market for business and company owners, where there are vast numbers of new yet identical brands and products that keep emerging every day so registering a trademark gives an individual right to own it. Trademark is a valuable asset because as the company scale up, it automatically aids to grow the value of trademark. The trademark registration provides uniqueness to brand and as well as protection from third party infringement. The trademark registration is not a compulsion but is a necessity to build a brand. Trademark Portfolio Management is helpful for managing brand’s trademark in different jurisdictions. Thus, trademark require strict level of specificity which could be achieved by the trademark portfolio management. It is important to maintain portfolio of trademark and protect it in this dynamic environment.
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