How to successfully transfer or integrate a trademark portfolio into a trademark management platform?

portefeuille de marques

portefeuille de marquesThe trademark portfolio, which refers to the set of trademarks owned, should be coherent, balanced and managed through a trademark architecture strategy. In practice, however, managing a portfolio can be complex, especially when it comes to integrating it into a management platform or transferring it. Indeed, various aspects have to be addressed in order to succeed in this operation, and it is essential to pay particular attention to the quality of the data.

Managing a trademark portfolio is becoming increasingly complex, especially when it comes to transferring or integrating a trademark portfolio. This operation can occur in a number of scenarios, including when :

– a company acquires a business and becomes the owner of a new trademark portfolio

– a firm works with a new client and is entrusted with the management of its trademark portfolio

– a company or firm decides to change service provider and adopt a new trademark management platform.

However, in practice, this integration or transfer can be frightening, complicated, tedious and be apprehensive for professionals, related to both the time required and the cost. Indeed, several practical questions may arise, notably:  what is the best way to proceed? In that sense, should it be done manually, automatically or by a combination of both methods? How much time should be spent on this? What information is essential to include?  What are the risks?

These are as many questions as one can ask to successfully integrate or transfer a trademark portfolio.

The key to success is the quality of the initial data : one needs reliable data.

How can reliable data be defined? It consists of data that can be automatically reprocessed if the trademark number is accurate and matches the numbers on the online databases of the trademark offices. In addition, the data to be retrieved must also be complete, including numbers, classes, full goods and services names, the historic of the life of the mark (transfers, co-ownership, licences, assignments) or basic data, i.e. numbers and classes only.

In the event that the integration of the trademark portfolio is done automatically, several problems may arise. First of all, as regards national trademarks, it is likely that two different trademarks may have the same number within the same trademark office.  In addition, in some countries, it is possible that the number of the trademark changes at the time of renewal. Consequently, if the data has not been updated, it is impossible to find automatically the trade mark in concerned by its number. Furthermore, particular attention must be paid to the language of the document. Indeed, since the wording of the trade mark is written in the language of the Office, it is necessary to use an automatic translation system.  While the English language does not create any difficulties, the situation differs if the wording is drafted in Finnish, Swedish, Chinese or Korean for example.

As regards with international trademarks, the good news is that the number does not change, thus making it easy to find. However, the major difficulty lies in having an up-to-date trademark status including the history.

Hence, there is no choice but to proceed with a manual integration and overview what happened in every country (limitations, objections, non-renewal, etc.). In addition, there are also issues regarding older trademarks and specifically when the designated country no longer exists, like USSR, Yugoslavia, and more recently the Netherlands Antilles for example.

Although the World Intellectual Property Organisation database provides data, it must be noted that this data is not sufficiently structured. For instance, the date of registration of the trademark in China is provided on the statement of grant or partial refusal in PDF, as well as the date of registration of the US trademark, which is important for the calculation of the affidavit. Furthermore, for some countries, in addition to the international trademark number, there is a national number, but this is only included in the PDF grant document.

In any case, it is not generally possible to rely on the name of the trademark because it may belong to different entities.

In view of all this, it is clear that the quality of the initial data will determine the best strategy for integrating a trademark portfolio into a trademark management platform. In this sense, depending on the quality of the data, automatic integration may be possible in one’s own system or be transferred to another system. If there is any doubt regarding the quality of the data, automation is not desirable.

Consequently, it will often be essential to call on human intervention in order to ensure the quality of the data and to assess what needs to be completed.

Indeed, experience shows that there is no trademark portfolio that is free of errors. Changing trademark management software is an opportunity to reset and correct, populate and improve the quality of trademark data, as well as to reorganise it.

Therefore, in order to support IP professionals, we have created IPzen.

IPzen is a trademark portfolio management solution that brings together several of your IP management features into one single, simple, easy-to-use, cloud-based platform.

At IPzen, the organisation of client management is designed to reflect the way clients are managed in vivo. For example, a client may have multiple companies or multiple trademark owners. Thus, the directory functionality makes it possible to create the information needed without duplicating it.

The IPzen platform allows a company to be created only once. For instance, if the company moves or has several addresses, these addresses can be added to the same company. In addition, if the professional works for a group, it is common to register trademarks in the name of different companies belonging to the same group.

Thus, one of the essential advantages of this structure is that it allows the client’s portfolio to be drawn up for all companies or for each owner.

 The client-based organisation allows access to be given by client and not by trademark owner. The client thus sees his trademark portfolio regardless of the owner.

Likewise, in a company, if the legal department manages the portfolios of subsidiaries, with IPzen, it is possible to create internal clients by giving specific access while having a global vision of the portfolios of securities.

In addition, the IPzen platform allows for online access to one’s trademark portfolio with simple manipulations, but also to proceed to exports and searches, ensuring flexibility but also data security.

At IPzen, our qualified team, specialised in the integration of trademark portfolios, will assist you and answer all your questions in order to facilitate your activities.

IPzen the platform made by lawyers for lawyers.

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