Designing the modern trademark department

By Chantal Koller,

As a business grows, so too do the demands on its IP department. In an excerpt from our white paper ‘Best practices in trademark management: A practical guide’, Chantal Koller sets out the pros and cons of different IP management models.

The ability to build a trademark strategy that not only covers current business reality, but also prepares it for future challenges, can be critical to business success. However, creating a future-proof IP management structure is only the first phase of the much more demanding process of implementing such a strategy. Here, challenges relating to the management not only of IP workloads, but also of IP suppliers, IP records and quality control, will become key. How should they be approached?

Facing reality

Time and budget are both limited resources for the modern-day IP department. But even if a corporate IP department is able to manage the full life cycle of IP rights on its own, a number of organisational questions need to be addressed centrally and supported throughout the entire company if they are to succeed.

More practically, therefore, companies need to bring together the right mix of external legal service and formality providers that will enable their in-house IP person or team to provide efficient solutions in light of the resources available, while also ensuring they don’t lose oversight of the entire portfolio.

In our experience, the following three models can prove to be successful in this regard:

  • Fully outsourced: This is the ideal model when the person responsible for IP is combining that responsibility with other roles, and for smaller/mid-size companies without full IP capabilities. In this case, all IP legal services and administrative formalities, as well as the related data, are managed externally. Ideally, a service level agreement (SLA) on service expectations and price is agreed between the company and its external counsel/supplier. Once in place, the company’s IP manager provides guidance as to the company’s strategy and business decisions, and fulfils a liaison role between the external IP counsel and his/her company. In certain instances, the external IP counsel may also second a member of its team into the business to help to set up processes and procedures.
  • Fully in-house: Some (usually larger) corporations choose to centralise IP management in-house and to use external suppliers where required (e.g. in foreign countries where the company has no domicile), but only as purely administrative executants, what we call point-to-point solutions. In such models, partners are usually chosen as part of a “low cost” approach, and the company needs to keep in mind that: “what you get is what you pay for”.
  • Hybrid model: There are several hybrid solutions possible, the main two being: (1) split of services between the in-house team and one central external supplier; or, (2) split of services among various external suppliers, such as high-end legal services on one hand and low-cost formality management companies on the other. In such instances, it is essential that the company’s IP manager provides clear guidance as to each stakeholder’s role and responsibilities. The main trap of such hybrid solutions is not to have one centralised data management solution, as this can lead to the stakeholders losing sight of the portfolio as a whole when addressing strategic questions. In the hybrid scenario, the main role of the in-house IP team is to conduct the orchestra in order for everyone to play in tune.

Success factors

Selecting from the models outlined above is a question of finding the right balance for your company. The chosen model may also evolve over time, as a company grows or expands into new markets. Success is often based on the ability to communicate openly on expectations, both internally and externally. Very often, IP managers seek “an agency to manage the complexity of the work”; however, there are often many hidden needs behind such a broad statement and, if all parties’ expectations are not clearly identified and addressed, the outsourced solution can lead to mutual frustration.

This is also the case when moving from one model to the next: discussing your plans with your partner(s)/counsel(s) and examining what solutions they offer is a good way forward here. Switching suppliers can be complex for companies, especially when the portfolio grows. The exercise should be based on solid reasoning and processes: switching for the sake of it can lead to a loss of focus on the company’s portfolio management.

It’s also important to keep in mind that there is no “one fits all” solution. Whichever model you choose, success or failure will likely be dictated by:

  • The existence of a fit-for-purpose IP strategy;
  • Centralisation of and easy access to core data;
  • Clear determination of the responsibilities of (or shared by) stakeholders; and
  • Acceptance of the model chosen and willingness to work with it.

Planning ahead

IP departments and their suppliers also need to keep one eye on the future. A model that works today may no longer meet in-house department needs as their company evolves or expands into new markets and geographies.

For example, companies that despatch their work to foreign agents (using the hybrid model) may find as they grow that they begin to lose oversight of what’s happening with their IP portfolio externally. Centralisation of core data will help to tackle this in part, but it may soon become preferable to use one main supplier – rather than trying to keep on top of the activity of their agents in different jurisdictions themselves.

Similarly, managing suppliers (such as multiple foreign agents) in-house may appear to be the ‘cheaper’ option, but is often more expensive in reality. A centralised model that coordinates activity via one main supplier provides greater oversight and strategic clarity, better record management and the opportunity to be proactive rather than reactive when enforcing and exploiting the full potential of IP.

For more tips and advice on setting up effective trademark practices for your business, please download our white paper ‘Best practices in trademark management: A practical guide’.

Chantal Koller is Managing Director – Trademarks at Novagraaf Switzerland.

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