World Trademark Review

Transcription

WTR_34 Cover_Final_Final 15/12/2011 15:08 Page 2
Issue 34 December/January 2012
www.WorldTrademarkReview.com
Also in this issue ...
Lessons from the BBC’s approach to trademarks
How to protect fictional brands in the real world
What the Interflora decision will mean in practice
Letters of protest – the forgotten trademark tool
Fit for purpose? Proposals to reform TRIPs revealed
World
Trademark
Review
Winning service
Is the trademark services industry meeting the needs of users?
WTR_34 PAGINATED_WTR 15/12/2011 14:22 Page 24
Feature
By Trevor Little
At your service
Budgets are shrinking, workloads are rising and infringement is omnipresent. Against this
background, accessing strategic non-legal trademark services has become increasingly crucial.
But how is the industry meeting user demand and what does the future hold? In an exclusive
survey, WTR polled trademark professionals for their thoughts on how the sector is matching
up to their expectations, and put the responses to service providers
24 World Trademark Review December/January 2012
December/January 2012 World Trademark Review
25
Feature: Winning service
In February 2010 WTR conducted its annual Global Trademark Survey,
asking in-house counsel and private practitioners for their views on a
range of issues facing the industry. One element touched on was the
offerings of non-legal trademark service providers. This sector is itself
a broad church, so this year WTR decided to delve deeper into both the
services currently offered and how practitioners view the industry in
general. In particular, four main sub-sectors were identified for
analysis – portfolio management software, renewals and recordals,
searching and watching. The main emerging themes were then put to
a range of service providers, to allo w them to directly address user
comments.
While this article focuses on the im provements that users would
like to see, drilling down to reveal where service offerings can be
improved, a natural starting point is to gauge the prevailing sentiment
towards the industry. In this respect, the picture is broadl y positive.
WTR asked users to rate their service providers on a scale of one to
10 (with 10 the most positive) on a range of c riteria within the four
main sub-sectors. The results predominantly fell within a scale of six
to seven – the exception being portfolio management software
offerings, where software flexibility and customisability was rated 5.4
overall and likelihood of recommending a current provider 5.9 (see
tables on pages 28, 30, 32 and 34). Man y of the comments made
alongside the questions were favourable – in some cases naming
specific individuals who worked well with their clients. But in other
areas there was also consensus on the types of im provement that the
industry could make, as well as potential areas for exploitation by
service providers.
The price is right?
Analysing the criteria against which users make their purchasing decisions,
price and customer service (including ongoing support) perhaps
unsurprisingly head the list (see table on page 29). Gi ven the current
economic climate and the continuing budget squeeze that has many
counsel in its grip, price is likely to remain a concern going forward.
Gripes included hidden fees, unclear pricing structures and being
charged for “everything, even for small administrative work”. One user
explained: “I have inadvertently ordered products I didn’t even know I
was buying – in part due to my unfamiliarity with changes to the
supplier’s online system; in part because their system is perhaps not
as transparent as it could be.”
There was also concern over fee hikes for any customisation or
broader searching capabilities, “which makes it cost prohibitive to take
advantage of”.
James Lacey, head of trademark renewals at CPA Global, argues that
despite the pressure on budgets, purch asing decisions should be made
not purely on cost, but rather on a recognition of all poten tial benefits:
“At a time when organisations are under increasing pressure to
optimise the value of their assets and reduce costs, trademark services
developed by an effective strategic partner should provide clients with
flexible solutions that can be tailored to in tegrate with and improve
their existing workflows, helping increase efficiency while ensuring
quality and reliability. The most effective partnerships are where the
service provider is viewed by the client as – and acts as – an extension
of the client’s own team.”
With budgets being slashed across the board, it is natural that
added value has become a buzzword among service providers,
particularly as competition in the industry hots up.
Stephen M Stolfi, vice president, global sales and strategic
partnerships at Corsearch, notes: “We understand that cost often plays
a key role in decision making, and differentiate ourselves with the
value we offer. For legal professionals, time is extremely important,
and with better quality, accuracy and workflow tools, legal
professionals not only save time, but provide a better result to their
own clients.”
For Thomson CompuMark, a key USP stressed to prospective and
existing customers is track record. Martin Burke, managing director,
explains: “We highlight our trademark experience and the fact that we
have been providing leading trademark solutions to corporations and
law firms around the world for several decades.”
Reinhold Nowak, chief executive of Dennemeyer Group, echoes
this sentiment: “Good trademark services are based on exper ience and
knowledge; therefore, trademarks should be entrusted to providers
who are stable and established in the business.”
Kimberly Wieland, senior director of trademark services a t CSC,
acknowledges that “in today’s market, price is always at the front of most
consumers’ minds”, but similarly emphasises that consideration needs
to be given to what you are getting for your money: “We stress to
potential customers that they should look at the product being offered,
the flexibility of the company they are looking at to customise work
product for them and, of course, who will be servicing their account.
Methodology
The survey process: Over a two-week period, between Augus t 30 and
September 13, WTR ran an online survey designed to build up a
complete picture of the trademark services market and how it caters to
user needs. The research focused on the trademark services sector as
distinct from the legal services sector, relating specifically to searching
and watching, trademark management software, and renewals and
recordals.
The survey form consisted of two main parts. The fir st asked
respondents to identify and rate, on a scale of one to 10, the services
they receive across the sectors examined. The second part consisted of
a range of questions about the industry in general terms, and how
users see the sector developing.
The survey was open to in-house trademark counsel and private
practitioners, and was promoted through the WTR blog and dedicated
mailshots to trademark professionals. In total, WTR received more than
1,000 submissions.
Editorial policy: WTR treated all responses as confidential and has not
disclosed any respondent’s comments or details to any third party.
Responses used in the magazine c overage of the results have been
quoted anonymously and not attributed to any particular individual.
Tables of service providers: In the service provider ratings section, WTR
suggested a number of service suppliers that respondents might use
(with product names cited according to confirmation from those
suppliers). Once the survey closed, WTR reviewed the responses to
ensure that only the views of qualifying individuals wer e included. In
addition, all results were analysed to ensure that in instances where a
respondent named a product or company in the ‘other’ box, product
names were aggregated under the correct company umbrella.
Given the nature of the industry, a wide spread of companies were
named and rated by respondents. Rather than giving every company
cited a rating (some of which would be based on onl y a handful of
ratings and others on 100-plus ratings), WTR decided to provide ratings
for the five companies which received the most feedback in each
category, to ensure the integrity of the data. The tables of services
suppliers thus should not be regarded either as exhaustive in each
sector featured or as an endorsement by WTR of the companies cited.
Portfolio management software
Respondents were asked, on a scale of 1 to 10 (10 being the highest), how they rate the company they use for portfolio management
software on the following criteria (only the five companies most rated by WTR survey respondents appear below, although an overall
industry rating is provided for comparison)
Industry average rating
The software's performance and reliability
The software's flexibility and customisability
Customer service and support
Likelihood of recommending this provider
6.7
5.4
6
5.9
Performance and reliability
IPPO (WebTMS)
Patrix / Patricia
Computer Packages Inc (CPi)
Thomson Reuters / Thomson IP Manager / IP Mas ter / PC Master
CPA Global / Memotech / Inprotech / FoundationIP
IPPO (WebTMS)
Patrix / Patricia
6.7
6.4
6
5.8
5.2
7.6
6.9
6.6
6.6
6.2
IPPO (WebTMS)
Patrix / Patricia
7
6.2
6
5.7
5.4
Flexibility and customisability
IPPO (WebTMS)
Patrix / Patricia
6.4
6.2
6.1
6
5.5
There are many great online products out there – what sets you apart is
the people who support the customers in using those products.”
Full service
This leads to the second c riterion that buyers cited – customer service
and ongoing support. Interestingly, this was regarded as more
important than the software and systems offered, suggesting that
buyers want to feel that, having made the purchase decision, an
ongoing relationship will help them to maximise the effectiveness of
the tools available.
As a result, there was some frustration at the way that revenue is
seemingly prioritised by service providers, with some users feeling
that more attention is directed towards winning new business than to
taking care of existing clients.
One experience shared by a number of respondents was a shift in
the nature of their relationships once a contract had been signed,
with key contacts moving on and relationships quickly drifting to
arm’s length.
The in-house counsel at one North American company recalls:
“The first person we dealt with was very knowledgeable and
understood that, as a private company, we were relying on their
knowledge and ability. The person we now deal with does not appear
as knowledgeable or as willing to help or explain information to us.
When I ask questions on information sent to us, he literally reads the
information sent to us. I have repeatedly stated I know how to read,
but want a clarification or explanation of the information.”
Perhaps unsurprisingly, when WTR put this complaint to service
providers, their unanimous response was that considerable emphasis
is placed on customer service and the clien t relationship. Wieland, for
instance, insists that at CSC, continuity of contact is at the heart of
their account relationships: “When we pitch a new client, we involve
the representative who will actually service the trademark account.
This is a relationships business – and people want to know and trust
the people who are servicing their accounts.”
Miriam Hölscher of SMD Markeur, meanwhile, points to staff
retention to allay fears about the loss of established personal
relationships, with provision made for knowledge transfer when staff
do leave: “The average experience of our employees is more than 18
years. When an employee retires, he always has to train others for a
long time before leaving, in order to transfer experience to younger
staff. The person who manages the customer relationship is also in
charge of observing the work process and the quality of the resul t.”
Thomson CompuMark boasts similar staff retention levels – the
average number of years that customer care representatives have
spent with the company is 16 in Europe and 14 in the United Sta tes.
Burke adds: “We are dedicated to hiring and retaining knowledgeable,
friendly and attentive staff, and service representatives go through
several months of training in order to provide superior customer
service. It is because of this th at they have a deep understanding of
clients’ trademark needs and challenges, and have in-depth knowledge
of our products and services that will benefit this need.”
Interestingly, Dennemeyer’s Nowak warns against over-reliance on
one point of contact: “In trademark services the personal touch is, of
course, important. Nevertheless, the provider has to make sure that
specific requests are fulfilled by relevant experts. At Dennemeyer,
then, clients have a personal key contact, but also experts for specific
countries and national requirements.”
At the heart of this issue lies the tension betw een the need for a
tailored, personal solution on the part of users and a desire to
operate within the parameters of existing sy stems on the part of
Table 1. What are the top criteria on which you base your decision
when purchasing trademark services?
Price
Customer service and ongoing support
Pre-existing relationship with law firm or c ompany
Software and systems, including integration and
compatibility with other systems
Flexibility
Level of local knowledge
Word of mouth/recommendation
Transparency of fee structure
Degree of global presence
Length of time in the marketplace
Extent of liability accepted
(1506 points)
(1414 points)
(1089 points)
(856 points)
(761 points)
(698 points)
(641 points)
(624 points)
(530 points)
(448 points)
(327 points)
Respondents were asked to choose only their top five criteria.
To calculate the ranking of importance, each time a criterion was
ranked first it received five points; each time it was r anked second it
received four points; if third it received three points; if fourth it
received two points; and if fifth it r eceived one point.
service providers.
Buyers of trademark services value a close, personal relationship
because they need to feel th at their particular needs are being ca tered
to, rather than having them folded into existing systems and
processes.
One survey respondent argues: “Companies don’t seem to give
enough time to understanding the clien t’s issues. They think they
know it all. But maybe sometimes a client doesn’t only require a
different approach – they may require a radical solution. Perhaps the
client just needs a smaller pac kage of whatever services the provider
is ready to offer. It is time to move with the clients. The age of the
service provider is passing by quic kly and they must adapt to the
clientele.”
Of course, where individual solutions are required, rather than
simply a scaling down of the services offered, flexibility can h ave an
impact on cost; in today’s competitive environment, this perhaps
explains why solutions are often sought in existing offerings. But such
an approach can have a deleterious impact on the user experience.
One in-house counsel complains: “Many talk down to me. I’m not
a big law firm and I’m not e ven a big user of services – we’re expected
to conduct most work in-house and very economically, which we do.
So I’m seeking someone who can provide me with the services I need,
not everything they sell. Further, I am actually very knowledgeable
about my profession and very involved in its evolution and
management; the last thing I like is to have a service provider talk to
me like I don’t know anything.”
Developing the know-how
Of course, the one area where service providers do have deeper
knowledge is in the ‘hows and whys’ of their particular systems and
processes – and it is here that help is often most appreciated. One
respondent identified a clear need for experts to “assist people who
are not as technologically adept as them”, while another admitted:
“I’m finding that the technology is now almost too advanced and hard
to keep up with. There are a lot of fea tures available that we just do not
take advantage of.”
In this regard, training both on initial use and after subsequen t
software updates was highly valued (albeit with some complaints
where this generated additional costs). Equally important is user
feedback at the development stage, as any system should be built
according to the needs of the poten tial user.
WTR therefore asked how systems are currently developed
– specifically with regard to the involvement of trademark
professionals and users.
Glen Nath, senior vice president, professional services, CPA Global,
responds: “Once internal testing is complete, a beta version of our
product is released to key clients, who test every area of the product
including all aspects of trademark prosecu tion. The testing is done by
both attorneys and administrators.”
Stolfi likewise states that Corsearch involves customers in market
research, workflow analysis and platform testing: “Software upgrades
are initially tested by the software development team which conducts
unit tests, shake-out tests and integration tests. This is followed by
quality assurance testing to check for errors across different scenarios
and conditions. Finally, user acceptance testing is conducted by an
internal group of users who are very knowledgeable in the trademark
industry, in order to confirm that the system meets mutually agreedupon requirements.”
Hölscher adds that SMD Markeur’s searching and monitoring
always pass through several selection steps conducted by different
individuals, and that “monitoring is adapted to the clien t’s needs
during an initial phase”.
For CSC, according to Wieland, “the majority of our product
improvement ideas come directly from our customers, and we involve
them in design and testing before release”.
While buyers welcome providers’ efforts to minimise costs,
there were concerns that these can backfire when directed at
personnel. A sophisticated understanding of trademark law is
crucial to the supply of strategic advice, and such expertise
inevitably costs more for providers in terms of salaries
December/January 2012 World Trademark Review 29
Renewals and recordals
The cost issue is of particular concern for small companies and solo
practitioners. Barbara Cookson of Filemot Technology Law, which licenses
the Marco IP management system to a small client base, says: “If you use
many of the renewal services, you have to give them your entire portfolio
and the bigger it is the less you pay. This is terribly discriminatory for
small firms.”
CPA Global’s Lacey admits this is a problem, but suggests that solutions
are available: “An effective renewals provider should be able to target and
cater for a large and diverse client base. We recognise that practitioners
with smaller portfolios may not have access to an extensive local agent
network and therefore are less likely to able to leverage buying power when
undertaking renewals. However, an effective renewals provider should be
able to apply negotiated rates to all clients - irrespective of the size of their
portfolio.”
Dennemeyer’s Nowak acknowledges that prices are based on portfolio
size, but adds that customer service remains of a similar standard - if not
more personal, because “smaller entities put a lot of importance on a close
and personal relationship with their service provider. So we offer a customised
renewal service, one single key contact, regular calls and visits.”
Thomson CompuMark’s Burke also highlights customisation as key
for smaller clients, as it “allows practitioners of any size to improve their
workflows”. He adds: “The majority of our tr ademark renewal clients
have portfolios of 500 or more marks. The primary reason for this is that
with larger portfolios, there tends to be a broader range of jurisdictions
and a greater need for experienced external assistance. Organisations
with smaller portfolios typically opt to manage their renewals
independently, utilising our software and deep rules content, rather than
hiring us to do it for them.”
Instead of tailoring existing systems, the demand for dedicated services
for smaller practitioners is one that specialists are also increasingly looking
to meet. Cookson argues: “Most renewal service providers provide a service
by managing the due dates and sending reminders. If you have a good
docketing system, you don't need that service, let alone want to pay for it to
be duplicated.”
One company that therefore offers an ‘on-demand’ renewals service is
Envoy International. Chief executive David Kennedy explains: “Our
customers come to us when they have one or more renewals to be paid.
They then can control when and whether to instruct us.”
The obvious question to ask is how the company can offer a service cost
effectively, given that users cannot leverage economies of scale in the same
way as larger organisations. Kennedy responds to this query by outlining the
main reasons. The first is that while the customer may be supplying a low
number of renewals, the client base as a whol e creates critical mass for the
company. The second is the automation built into the software interface.
Crucially, though, Kennedy notes: “Our customers are IP professionals who
generally have their own case management software and know the subject
matter – they don’t need us to tell them when cases are due for renewal or
what classes the marks are registered in. They provide us with accurate
details exported straight from their management software and we process
the renewal payment.”
In this regard, the service is a simple transaction carried out on an ad
hoc basis. While this means that the onus is on the user to ensure that it
keeps on top of its records and due dates, by stripping away value added
services or offering an integrated software system, the service can be
offered at a lower price.
Respondents were asked, on a scale of 1 to 10 (10 being the highest),
how they rate the company they use for renewals and recordals on
the following criteria (only the five companies most rated by WTR
survey respondents appear below, although an overall industry
rating is provided for comparison)
Technical and legal expertise of this service
Ability to reduce your administration burden
6.4
6.4
6.3
6.3
Technical and legal expertise of this service
Patrafee / Patrawin
Thomson Reuters / Thomson IP Management Servic es'
Trademark Renewal Payments (formerly MDC)
Dennemeyer 6.6
CPA Global
7.6
7.2
6.6
5.6
Ability to reduce your administration burden
Patrafee / Patrawin
Dennemeyer 6.7
CPA Global
7.6
7
6.4
5.7
Patrafee / Patrawin
Dennemeyer 5.7
CPA Global
7.5
7.1
5.8
5.6
Patrafee / Patrawin
Dennemeyer 6.4
CPA Global
7.6
7
5.8
5.6
Thomson CompuMark, says Burke, practises “user-centred design
in developing and enhancing products”, with user input utilised in
product development; customer consultations also occur throughout
the development lifecycle.
The situation at Dennemeyer is slightly different, as the company
also uses the system itself for trademark renewals, recordals and other
law firm activities. Therefore, explains Nowak, “all updates are first
tested internally by two staff members with more th an seven years’
renewal experience. After first release, members of the Dennemey er
Group staff work internally with the upgraded software before it is
provided to clients”.
Of course, having to get to grips with a new system is not always
the end result of proactive changes in service supplier. There have
been several consolidations within the sector of late: last year
Corsearch acquired Edital, and as this piece w as being written CPA
Global announced the acquisition of Ipendo – an IP management
software and service provider with a strong presence in the Nor dic
region – from the Zacco Group consultancy. Sometimes a change in
ownership simply means business as usual for users of a particular
system; but for others it can be more taxing.
One private practitioner from North America told WTR: “For years,
we were using an absolutely amazing trademark search and watch
software operated by an independent company. We loved it – it was
completely user friendly, had a simple interface, was very flexible and
produced great customisable reports. What happened? Another
organisation bought the company out and replaced it with the w orst
product I have had the displeasure to use in y ears. This is classic
stupidity.”
In such instances, rather than embracing the new system, the
customer might well re-evaluate its relationship with a provider and
choose to retender its business.
An expert touch
When outlining the criteria that influence purchasing decisions, several
service suppliers mentioned the notion of forging strategic partnerships.
However, many users are sceptical as to whether this is being achieved in
terms of the depth of trademark knowledge required.
While buyers welcome providers’ efforts to minimise costs, there
were concerns that these can backfire when directed at personnel. A
sophisticated understanding of trademark law is crucial to the supply of
strategic advice and such expertise inevitably costs more for providers
in terms of salaries.
One African-based in-house counsel suggested that “suppliers
should employ trademark attorneys and improve the quality of the
services. Let’s take, for example, searches. Increasingly, we prefer to order
availability searches with legal opinion”.
Legal expertise is also important in informing search
effectiveness; if this is missing, the quality of the resul ts will
inevitably suffer. One respondent cited the example of failing to
include cancelled or abandoned registrations and applications in the
United States, where the marks might still be in use and could
therefore still pose a risk.
31
Searching
Respondents were asked, on a scale of 1 to 10, how they rate the company they use for searching services on the following criteria (only the
five companies most rated by WTR survey respondents appear below, although an overall industry rating is provided for comparison)
Quality of date you receive from the provider
Flexibility and usability of search results
Linguistic capability
Likelihood to recommend this provider
Quality of data you receive from the provider
7.2
7.1
6.8
7.1
When quizzed on searching offerings, users voiced concerns about both the
comprehensiveness of searches and the sheer number of hits r eceived.
On the issue of false hits in both watch services and trademark
searches (ie, where there may be some putative basis for similarity, but
simply no basis for commonality from an enforcement perspective),
Burke responded that “hit selection is a critical piece of overall product
quality”, and that Thomson CompuMark’s “approach is to provide
relevant information (including identical matches in/out of class,
phonetic and conceptual similarities) to aid decision making. In many
cases, we develop search/watch strategies directly with clients and
customise their reports to their particular needs and requirements”.
At CSC, data is reviewed with analysts before it is published to
clients, which Wieland says allows the company “to eliminate many of
the false positives and the data dumping that may occur with other
watching and trademark searches. Our goal is to deliver actionable data
– not piles of data that our customers must wade through in order to
find the relevant records or notices”.
At CPA Global, supply search reports are handled through a third party,
but La Rooy similarly stresses the human element incorporated into the
company’s watching solutions, using “multilingual watch analysts trained
and experienced in detecting trademark infringements that computer
technology cannot detect. We do notify on marks commonly missed by
computer technology and reduce the amount of marks of no r elevance.”
The above suggests that activities are not purely automated, which
should go some way towards allaying the concerns of those who sometimes
suspect that a human eye might be missing. But of course, human expertise
is also a contributor to cost – something that is unavoidable in this respect.
Interestingly, the picture for service providers is complicated by the
divergent demands of in-house clients and priv ate practice users. One
of the latter stated: “In the search system, I would like to be presented
with a larger number of results, so that I can be responsible for filtering
them and presenting to the client what I deem mos t important.” In this
scenario, the human element comes into play externally from the service
provider; but overall, the demand from users is for trademark expertise
to be applied to results, leading to an informed set of hits.
In terms of advice, however, a North American pharmaceutical
company lawyer points to a reluctance on the part of service providers to
get too involved: “We have overall been pleased with our service
providers. However, sometimes it seems it’s difficult to get a real feel for
local practice issues because there is a tendency for service providers to
offer black letter, conservative advice rather than work with the client to
think outside the box. I realise there are issues of liability th at may dictate
the service, but I believe most clients understand and appreciate risks
sufficiently to undertake this sort of dialogue.”
And providers do seem to perceive the need for such focused
expertise. Corsearch’s Stolfi states: “All of our staff go through
extensive customer service training and also con tinuing trademark
education, so they have a complete understanding that the work they
provide is a critical component of our customer’s business.”
32
World Trademark Review December/January 2012
Avantiq / Inspiro
Corsearch / Edital
Thomson CompuMark (from Thomson Reuters) / SAEGIS on
SERION / Thomson CompuMark Trademark Searching
SMD Markeur
Onscope
7.7
7.6
7.2
7
6.3
Avantiq / Inspiro
Corsearch / Edital
SMD Markeur
Onscope 6
7.8
7.5
7.1
7
Avantiq / Inspiro
Corsearch / Edital
SMD Markeur
Onscope 6.6
7.5
7.1
7.1
6.9
Avantiq / Inspiro
Corsearch / Edital
SMD Markeur
Onscope 5.7
8
7.5
7.2
7
Lacey additionally stresses the role that project managers play at
CPA Global: “From the outset, we provide each client with a project
manager to ensure a smooth transition of w ork. From then on, each
client has a dedicated point of contact who has specialist trademark
knowledge and experience. Regular account reviews are undertaken to
monitor service delivery and to respond to ch anging client needs.”
In practice, this expertise translates into reports that both are
detailed and, crucially, deliver results that highlight the marks truly
worth citing. In this regard, service providers should avoid presenting
results with a high risk indication just to be on the safe side, bu t rather
winnow things down via commercial assessment.
This critical aspect of the reporting function is in the interests of
service providers, as it can have a direct impact on repeat business. One
European private practitioner noted: “No one service provider is perfect
– with both of the main providers w e have used, important details have
been missed from reports, creating tremendous difficulties for us. I find
myself now comparing results often between two providers to be sure I
have obtained the best possible results. Overanxiety not to miss
anything means that some comprehensive searches contain completely
irrelevant data, which costs time and money to rule ou t of the equation.
Increasingly, this is happening with both search and watch services, with
the risk that the costs involved will mean clients are less likely to
undertake searching and watch services.”
Of course, in terms of the na ture of reports, service providers
themselves experience difficulties in accessing comprehensive data
from national offices. One private practitioner from Africa notes: “The
accuracy and effectiveness of services can unfortunately be affected by
the lack of organisation, and effective information storage and
retrieval systems, within the local registry.”
A suggestion for tackling this came from a Sou th American lawyer,
who recommended that service providers actively collaborate “with
the trademark offices in each coun try and convince the registrars of
the importance of creating and developing a trusted database”.
Into the cloud
Turning to the future, WTR also sought to explore attitudes to the
evolution of the trademark services industry.
In terms of new services that users would like to see, a few
common themes emerged. Cloud-based services and hosting w ere
repeatedly mentioned, with one North American private practitioner
stating: “Cloud-based service is critical to reducing cost and increasing
reliability and flexibility, as well as to providing more innovative and
efficient services such as direct access to , and download of, records
from offices around the world.” Another suggested “cloud-based
docketing systems for smaller offices”.
But service providers were divided as to whether their future lies
in the clouds. At CPA Global, Lacey believes that “cloud-based
technology will play an increasingly important role within our
industry”, adding: “Our vision is to bring clients and suppliers closer
together through cloud-based services to maximise opportunities to
drive efficiency. For us, cloud-based services are an enh ancement of
our current offering rather than a replacement.”
By contrast, at Dennemeyer, cloud-based services are thought to
lack the customisation options that make for happy users. Nowak
adds: “Unpublished intellectual property and decisions regarding
intellectual property – such as whether to maintain or drop it – are
highly confidential and are best stored in local serv ers, which are
reasonably protected. Renewal-only services may be less critical
(except the decision not to renew a mark). Nevertheless, cloud-based
services have the feeling of being un trustworthy – one never knows
where one’s data is stored or who could have access to it.”
At Corsearch, however, Stolfi says: “Our Advantage Screening and
Edital.com platforms are web based, and all of our products can be
customised. So yes – cloud computing can reduce internal costs,
lessening the need for internal servers.”
Online issues
Two other areas highlighted for potential development, in terms of
the services that many users would like to see, are domain name
searches and social media watching. These can help trademark owners
in two respects. The first concerns watching services, with “domain
names, infringing web pages and misuse in soc ial media the main
areas where these companies can expand in an unrestr icted space”.
The second relates to a more intangible measurement – trademark
health. As one European in-house user explained: “I would like a
service which helps the holder of a trademark to understand its
Creating visibility
In terms of interaction with trademark service providers, WTR was keen
to ascertain how users have sourced potential partners, excluding cold
call solicitation. Perhaps unsurprisingly – given that this is the one
marketing activity that service providers seem to embrace across the
board – conferences and exhibition presence were the most common
context in which trademark owners had come across different
companies (73.5%). Online marketing and internet searches/company
searches accounted for one-third of visibility. Interestingly, print adverts
and paid-for editorial were next. While this ranked slightly below online
marketing, fewer trademark services companies currently engage in
print advertising campaigns, suggesting that those which do are
benefiting from their activities.
One marketing tool cited by several users as particularly useful were
white papers, which allow readers to keep up to date with industry
developments. This is in marked contrast to the proliferation of webinars
– which one user summed up as “t oo time-consuming in the middle of
my work day” – and attendance-driven options, “which are either not in
my geographic area or again too time consuming”.
While some channels are underutilised by service providers,
elsewhere there was a sense of f atigue at being repeatedly pitched to
sign up for additional services. One in-house counsel complained that
even a ‘no’ is not al ways taken as gospel: “Companies should s top trying
to go around the in-house contact – work with us to make us look better
internally, and listen to what we consider priorities (based on our
industry or company). Too many try to sell services to other people in the
company – services that I've already refused as they are not applicable,
so when I receive the request back on my desk, I know e xactly what
they've done.”
reputation by analysing the Internet, commonly used search engines
and websites.”
Feedback from service providers would suggest that options for
online watching are already available. Hölscher notes that SMD
Markeur offers “domain name searches and monitoring (identical,
constituents and even similarity), and we offer to monitor potentially
infringing trademark use on the In ternet”; while CPA Global conducts
both name searches and social media watching services. Similarly,
according to Burke, Thomson CompuMark understands “that the
social media space is an emerging and e volving one”, and has
incorporated this into its products, as well as continuing to offer
domain name searches and watches. The message is repeated by CSC,
which also adds monitoring of social media user names to the list.
Given this apparent availability of services, it is in teresting that
many users seem unaware of them, suggesting that this is one
marketing message that has not yet been fully conveyed.
By contrast, there is only patchy availability of another service that
users are keen to see – post-search investigations. WTR was variously
informed of the desire for “local infringement investigation services”,
those “related to potential and actual infringement, especially in
relation to Customs” and “regular searches to trace infringement”. One
Latin American private practitioner stated: “Post-search investigations
are key to adequate trademark protection and enforceability, but few
vendors follow up on their reports.”
In relation to these requests, Burke states: “Thomson CompuMark
works with Marksmen, the leading provider of in use searches in the
United States. For Europe, we have an internal multilingual team to
provide top-notch investigation services.” Wieland confirms that CSC
offers “three free investigations for records in our full trademark
research reports – all clients have to do is call us for this service”.
33
Trademark watching
Respondents were asked, on a scale of 1 to 10, how they rate the company they use for trademark watching on the following criteria (only
the five companies most rated by WTR survey respondents appear below, although an overall industry rating is provided for comparison)
7
6.8
6.6
7
While “degree of global presence” was deemed one of the l ess important
criteria when choosing a trademark services supplier
(see table on page 29), when it c omes to searching and watching, local
expertise was identified as very important by a majority of user s (55.6%),
with over one-third viewing it as important (36.1%).
In addition, several users specifically highlighted language capability
as a critical component of successful searching and watching. One
stated: “Some companies provide incomplete search and watch results
and do not take linguistic aspects sufficiently into account. This is
usually the case when there is no human analysis and the results are
screened automatically.”
In terms of local presence, Hoelscher agrees with the importance of
being on the ground. SMD-Markeur utilises a network of trademark
attorneys to achieve this, while Thomson CompuMark points to its offices
in seven countries and internal analysts speaking “multiple languages”.
The latter is also a strength cited by other service providers.
According to Stolfi, Corsearch is confident that “our multilingual search
team, coupled with our industry-leading intelligent search abilities,
allows us to provide the best overall results”; but adds that the
organisation will “work with local agents whenever we feel that the
search quality will benefit from local analysis”.
CPA Global’s La Rooy is more specific on numbers, stating that its
team is proficient in over 60 languages. He adds: “Journals are sourced
from every jurisdiction, and reviewed by employees with the appropriate
language skills. Many of them are nationals of those countries where
watching is performed, meaning that local equivalents and local market
knowledge can support the language/visual match.”
Kimberly Wieland of CSC is quick t o respond to fears of excessive
automation: “We not only use automatic translation services, but also add
the human element – we use native speakers to translate rather than just
rely on automated technology. It gives far better results to our customers.
At CPA Global, Catherine La Rooy, head of TMDS and domains, notes
that the company “does not currently offer these services”, but suggests
that the area may come in for consideration, adding: “We are always
looking to enhance our service offering in discussions with our clients to
help them better meet their business needs.”
A number of additional services or features were suggested by
users, including:
• pharmaceutical searches that take into account data from health
authorities so that “pharmaceuticals can meet both legal and
regulatory clearance requirements”;
• watch services for geographical indications, “so they can be
opposed by affected trademark owners within the non-extendable
six-month deadline”;
• landscape searches “to show what the occupied marks look like for
a particular product or service, to help clients choose marks that
are not likely to conflict with existing marks”;
• advice on the latest developments at local trademark offices – in
particular, how they impact on searching and watching;
Corsearch / Edital
CSC 7.2
SMD Markeur
Thomson CompuMark (from Thomson Reuters) / Thomson
CompuMark Trademark Watching
CPA Global/ CPA / TMDS
7.6
7.1
7
6.6
Corsearch / Edital
CSC 6.5
SMD Markeur
CPA Global / CPA / TMDS
7.6
6.9
6.5
6.3
Corsearch / Edital
CSC 6.3
SMD Markeur
7.3
6.7
6.9
5.7
Corsearch / Edital
SMD Markeur
CSC 6.6
•
•
•
7.7
7
7
6.9
services offered via smartphone and tablet com puter applications;
notices about possible cancellations for non-use – “maybe a link or
a file inside the intranet of the respective software showing or
hosting a use book, with evidence of use of all marks around the
globe”; and
a reverse domain name/Whois look-up feature to allow users to
“find all other domains registered by an infr inger which haven’t
yet turned up in a watch report”.
These suggestions would indicate that users are seeking a deeper,
more personalised experience in terms of data, so that they can
choose the media and formats that suit them best. Burke, for one,
predicts that these industry trends will shape Thomson CompuMark’s
offerings: “We see a number of trends in the trademark ind ustry. First,
the use of digital tools h as been a driving force in the way our
customers do business, and this dynamic will grow even more rapidly
in the coming years. Second, access to, and incorporation of,
appropriate content in trademark search and watch results will
Figure 1. To what extent is local knowledge and expertise, including
foreign language proficiency, important in searching and watching?
Very important
Important
No opinion
Unimportant
Not at all important
55.6%
36.1%
6.3%
1.7%
0.3%
Figure 2. What is the most likely scenario for how you see the trademark service provider marketplace evolving?
Vendors and law firms will need to work ever more closely
Vendors and firms work well together today and will continue to do so
The growth in the number of in-house trademark practices will make firms and
vendors more competitive with one another
Vendors will increasingly encroach on services offered by law firms
The vendor marketplace has reached the limit of what it can offer without
providing legal services
Vendors and firms will offer more and more distinct services and competition
between them will diminish
Other
continue to evolve. Inclusion of an expanding domain name space and
content from websites and other contextual sources will augment
traditional trademark registry data, allowing for a full contextual
assessment of brands. Third is collaboration. It is critical to provide
secure and useable environments to support collaboration between
parties that will enable the workflow of tomorrow. In-house counsel,
outside counsel, local agents and even business partners need reliable
and quick access to shared content. Finally, while we have deep
understanding of common trends within the trademark ind ustry,
many trademark professionals require a degree of personalisa tion and
customisation.”
This move towards personalised delivery of robust information
presents a distinct challenge to service providers – how to offer a tailored
product and increased system flexibility while keeping costs down.
Forecasting the future
These predictions naturally lead to a consideration of the industry’s
future as a whole. The final question in the surv ey centred on how the
marketplace is likely to evolve (see chart above). While responses were
mixed, the main focus concerned proactive partnerships between law
firms and service providers, with responden ts stating either that
vendors and law firms will need to w ork increasingly closely (23%)
or that the two currently work well together and will continue to
23%
22.6%
18.9%
18%
9.3%
6.3%
1.9%
do so (22.6%).
This sentiment is echoed by Corsearch’s Stolfi: “We feel that
collaboration between legal professionals and their service providers
will become even more critical, as everyone becomes tasked with
providing more and more value.”
The law firm/service provider relationship clearly remains critical,
and the challenge is for providers to meet demand for more
sophisticated data and advice without impinging on the services that
law firms (also clients) offer.
In this regard, there will be pressure not to offer too m uch in the
way of trademark-specific advice from some quarters (tellingly, almost
one-fifth of survey respondents felt that the growth in the number of
in-house trademark practices will intensify competition between
firms and vendors).
This tension was highlighted by several private practitioners. One
stated: “What is needed from service providers is informa tion on
which to base advice – anything further would encroach on my
business.”
Interestingly, some in-house commentators agreed: “Law firms
should be the ones handling activities beyond what the providers do
now. Otherwise, the lawyer-client relationship is not there, and clien ts
like us do not get the same confidence, sa tisfaction and value of work.”
But while service providers may risk treading on law firms’ toes as
The law firm/service provider relationship clearly remains
critical, and the challenge is for providers to meet demand for
more sophisticated data and advice, without impinging on the
services that law firms - who ar e also clients - offer
they expand their offering, most users feel that a balance between the
two can be maintained. One in-house counsel at a pharmaceutical
brand predicted: “Vendors will offer increasingly accurate information
and enlarge their information sources to give increasingly broader and
reliable information. Legal offices will continue to offer very different
services to their customers. Each of them – vendors and legal offices
– will have their own space for working with potential customers.”
Another private practitioner suggested: “Service providers will
increasingly try to interact with and understand the requiremen ts of
legal practitioners without providing paralegal services, which may
end up being detrimental to the services offered by legal
professionals. Further, they could try to gather information on the
performance of client’s trademarks in the marketplace and give
information on competitors’ trademarks. This would help in letting
clients know whether their marks are considered to be well known, or
whether they are at risk of becoming generic or commonly used in the
trade. After all, survey reports are not the only methods that can be
used for making sure that clients’ trademarks are known among the
general public.”
Looking ahead, several respondents forecast less reliance on
external partners for bread-and-butter trademark functions. One
stated: “In many cases (especially change of name recordations and, to
some extent, renewals), I still have serious doubts that outsourcing
these services really reduces our administration burden significantly.
So I would predict a trend of insourc ing some of these services again.”
However, at Dennemeyer, Nowak notes that cost will play a critical
role in this decision: “Due to cost sensitivity, the need for standardised
service is increasing up to total outsourcing of trademark work to onestop-shop providers that take care of the whole process – trademark
pre-filing activities, filings, legal work (eg, oppositions, searches,
opinions, contracts, licencing), recordals, renewals, archiving,
docketing, reporting).”
CSC’s Wieland thinks that “more and more services will be link ed
together. The brand creation portion of the lifecycle will have to
involve not only trademark services, but also domain name and soc ial
media username registrations. Those that pull it all together in a
simple-to-use, efficient platform will come out on top.”
Other users envisage reduced need for human interaction,
identifying a “self-service culture” in which “companies need to continue
to allow users to readily access data, process it and store it without using
a middle man if the company so desires. We don’t want to have to
explain our needs to someone if we can just run searches ourselves”.
The latter speaks again to personalisation of the customer service
function. Considering his experience at Corsearch, Stolfi contends:
“Fewer law firms and corporations are requiring paper watch notices
and paper search reports, and there will be a time w hen we will be
paperless. Clients are demanding that their search reports be delivered
sooner, so turnaround times will also dec rease, and there will be much
more convergence of data and information from different sources
around the world, allowing for easier, more cost-effective global
trademark clearance and enforcement.”
CPA Global’s Lacey concludes: “The industry will have to develop in
line with the need to maximise effic iency and reduce costs, while
maintaining high levels of quality and reliability.”
Ultimately, it is about customers having access to the data they
want, when they want it, with added value where they need it. Of
course, this will create price challenges because system developers
cannot create a one-size-fits-all platform. But competition should help
keep costs down – allowing users to become more demanding of their
strategic partners. WTR
37
60
Over
years experience
jurisdictions covered
For over 60 years brand professionals have chosen Corsearch
New Screening Databases:
as their trademark solutions provider — and we are only
Bolivia
Brazil
Iceland
India
Macau
Montenegro
improving with age. Corsearch has the largest collection of
complete trademark databases available online in the world.
We offer best in-class Screening, Search and Watch tools
which allow our customers to work more efﬁciently.
Panama
Peru
Philippines
Singapore
Taiwan
Venezuela

World Trademark Review

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