A recently published interview with Bacardi IP lawyer François Griesmar offers some useful, strategic advice for in-house trademark counsel. Thanks to World Trademark Review for posting the interview.
Griesmar argues that corporate legal departments must continue to make a strong case for the enforcement of intellectual property. He continues by saying:
It is difficult to restart a trademark protection strategy once it has been stopped," he explains. " When a company starts a successful product in Europe and does not protect it in the main markets, their competitors might do so. When the time comes for expanding in the market, they will face a big problem. Sometimes it is necessary to anticipate and protect intellectual property accordingly. Always think long term."
Griesmar’s advice may sound obvious to some, but many corporate legal departments are still struggling to convince the executives of the value in trademarks and why such a strategy is important. Although the interview takes place in the context of Europe, the advice given applies to IP globally.
Here’s the interview:
What are the most prominent IP issues challenging IP Counsels in Europe at the moment and what solutions would you recommend?
François Griesmar: There is a growing imbalance due to an overdevelopment of the Community Trade Mark (CTM). The CTM is a fantastic tool but increasingly being used by trademark applicants inappropriately – not only in view of their current or long-term needs, but because of CTM’s low-cost profile and privileged status due to its use requirements.
The European Commission’s trademark system study conducted by the Max Planck Institute is a unique opportunity to lay aside all habits and tinkered solutions to make an unrestricted and unbiased audit of trademark systems in Europe.
We must determine whether all national trademark systems should be merged into the EU system or if the current coexistence should be maintained. I believe it should be reconsidered, and more demanding use requirements for CTMs set up. The existence of hundreds of thousands of CTMs (which are used only in one or a few Member States) unjustifiably block other applicants in other countries, clog the registers and in the long run, represent a serious threat to the sustainability of the overall trademark protection system in the EU.
What strategies to safeguard IP, copyrights and trademarks from the competition would you suggest?
François Griesmar: IP Counsels need to think about their global protection strategy and identify their company’s core assets – the assets that differ from competing products or services, that ensure success to their business, as those will be the first targets for imitation.
In our case, the BACARDI Superior (Rum) is our most important brand, therefore we pay much more attention to the IP rights related to that brand than any other. IP Counsels should also simultaneously integrate all available legal tools, and combine them in a pragmatic way. They need to have all tools in mind, but decide which combination to use depending on the importance of the matter and their budget.
If an IP Counsel knows what is of most and least importance to the business, then they can focus their efforts, time and money accordingly. With global trademarks, we have to be broad as regards their geographical protection therefore we make use of tools provided by the WIPO international trademarks, as they are a good way of protecting trademarks in many countries for a reasonable price.
What long-term strategies would you recommend to IP Counsels?
François Griesmar: A close and in-depth cooperation with the operational officers (in particular marketing) is needed, to be certain core IP assets are well-identified and periodically reviewed, for an optimal allocation of resources. That enables a consistent protection and defence policy. Last but not least, do not allow short-term financial constraints to ruin your long-term IP strategy – the time unit for IP strategies should be a decade rather than a quarter.
What are some of the trends that you see playing out in the future?
François Griesmar: The computerization of all national trademark databases within the EU should soon enable a complete online trademark search in the EU. As regards design protection, if this is confirmed by the accession of new parties in the EU after 2008, the long-awaited rebirth of the international Design Patent system could make design protection strategies much easier and cheaper.
I am hoping that within the coming few years we will see efficient trademark search software for design trademarks that enable a fairly reliable online risk assessment.
The current business context is an incentive to implement extreme short-term cost-cutting measures – IP Counsels are being selected purely on a financial basis, ignoring long-term relationships and what IP management really is all about.
This will incur serious problems; immediate difficulties must not lead to such short-term practices which will prove detrimental to the business. It is difficult to restart a trademark protection strategy once it has been stopped.
IP lawyers must explain their long-term strategy to management, and make sure they are allocated the budget they require. When a company starts a successful product in Europe and does not protect it in the main markets, their competitors might do so. When the time comes for expanding in the market, they will face a big problem. Sometimes it is necessary to anticipate and protect IP accordingly. Always think long-term.
That’s great advice. What do you think?