Introduction
Owning more than one registered trademark means a need to create a trademark portfolio comprising of service marks, registered marks and even marks that are in use but are not registered. With the expansion of a business, the owner finds the need to manage its wide range of trademarks from any kind of misuse and when already misused, take necessary action against the violators. This can only be done through a strict vigilance system where someone takes utmost care of the trademarks through a strategic and purposeful approach. Here comes the requirement of Trademark Portfolio Management.
Trademark Portfolio Management (TPM)
A Trademark Portfolio Management (TPM) is punctual and strategic management of all legal processes related to trademarks or service marks. It starts from the registration process of marks to their maintenance and leads to complete protection in all desired jurisdictions. A TPM is designed to efficiently and securely adapt to your technical needs. In other words, a trademark portfolio is a compilation of all the trademarks associated with a particular company that distinguishes a business’s product and service from its competitors. The trademark portfolio of a company is an important asset to the company and as such managing it efficiently is very crucial for the owners. TPM is also essential to uphold the company’s brand value and goodwill and strengthen the company’s worth by avoiding legal disputes and infringement losses.
Importance of Trademark Portfolio Management (TPM)
In today’s highly competitive market, every trademark owner should manage their company’s trademark portfolio. Managing several trademarks right from their identification to their enforcement is a tedious task and needs to be managed strategically and effectively. Effective trademark management is very important for the company since trademarks are essential company assets that help the company to expand and stand out of the crowd hence it is necessary to understand its importance for business owners:
1. TPM saves the company from infringement disputes and lawsuits. A trademark owner has an exclusive right over its property when registered and when used by any other person without permission leads to infringement disputes which is expensive as well as time-consuming. By managing a trademark portfolio, a company can avoid the risk of litigation as possible trademark conflicts can be avoided, and required actions can be taken
beforehand.
2. In order to protect the company’s brand image or goodwill again, TPM is essential. A brand image helps one to differentiate between goods and services of one person from another thereby assuring the quality of the good and service. Consumers easily recognize their brand and their loyalty and trust over the brand remains intact.
3. Trademarks are intangible assets of the company that increases the business value potentially. Effective trademark portfolio management helps in enhancing a company’s worth tremendously. It also helps the company to attract investors, and obtain finances when
required and also lead to advantageous licensing agreements.
4. A strategically planned trademark portfolio helps the company to stand out of the crowd by maintaining a competitive edge. It helps in the growth of the company by assuring that other competitors using similar brand names for goods and services are not interfering with their market.
Trademark Portfolio Management (TPM) Services
Under Trademark Portfolio Management, the following mainstream and subsidiary services are covered:
→ All processes involved in the registration of trademarks and service marks under Nice Classification nationally and globally;
→ Timely renewals of the registered marks;
→ Monitoring trademarks minutely;
→ Addressing trademark oppositions;
→ ADR related to trademarks and service marks;
→ Trademark infringement litigation;
→ Trademark prosecutions;
→ Due diligence related to the acquisition, hiring, sale, or purchase of any registered trademark or service mark
→ Restoration of marks removed from register
Best Practices for Trademark Portfolio Management
Today, with an increasing rush of start-ups and e-commerce market globalization and international exposure to businesses, it has become difficult to maintain a monopoly over a trademark and hence this has also led to increased risk to protect them. Protection of a
company’s trademark nationally and internationally has become a challenge to all specially startups and SMEs. For a trademark of a company to act as a tool for its growth, sustainable and strategic sales and marketing along with far-sighted rigorous management is required. Trademark Portfolio Management is a tedious job as every company has different resources dedicated to this task. A company can either choose to do it in-house or hire a professional agency or can also choose to manage some tasks in-house and rest with a professional. Whatever way it chooses, the main objective is to follow best practices to maintain TPM which protects the company’s brand reputation. A systematic approach is required to be followed by companies for a proper TPM which includes the following:
1. Auditing your Portfolio – The biggest challenge companies face with trademarks is the lack of proper knowledge of their assets. This means either they don’t know the trademarks they own or the status of their assets. A trademark audit investigates all the trademarks related to the company whether registered or unregistered. Conducting an audit helps at the outset of trademark management strategy and then regularly monitoring it. Any conflicts or areas where action is required are revealed when we do an audit.
2. Defining Strategy or Creating Plan – This includes preparing a plan to protect the brand reputation. An effective and systematic strategy is necessary for effective management of trademarks. This requires a multi-stakeholder approach that involves marketing and
business development strategies along with a trademark portfolio management strategy. This strategy should identify business development goals, and geographical focus including areas of new geographical expansion, challenges, gaps in the current strategy. Planning your trademark portfolio includes timely registration, renewals, and enforcement.
3. Scheduling Filing and Renewals – Keeping accurate trademark records is essential for timely filing and renewal of trademark is done to ensure business targets are met.
4. Monitoring Usage – Trademark monitoring is an essential aspect of TPM since it is very important to keep a check on trademark usage. A proper enforcement measure is necessary in cases where third parties violate the trademark of a company.
5. Other practices include the following –
i. For effective TPM it is necessary to maintain consistency across all trademarks;
ii. It should be responsive to market trends and corporate requirements;
iii. It helps in keeping the goals and objectives of the company intact;
iv. It helps in market development, adaptation of new technologies, and consumer
preferences;
v. Collaboration with stakeholders – internal and external.
Conclusion
In order to protect one’s brand, the company needs to have a proper trademark portfolio management system. From a timely audit of the marks to planning a proper strategy, to maintaining trademarks record to monitoring usage, everything is a crucial part of protecting a brand image and value. Companies can protect their trademarks from infringement and legal actions, manage their portfolios and increase their brand values efficiently through Trademark Portfolio Management practices. Hence, having effective Trademark Portfolio Management in place is must for a company.
