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intellectual property services

background

An SME was providing specialist services in a number of countries, based on technology acquired from a third party. The services were provided under a brand which the vendor had protected by trade mark registrations filed in numerous countries throughout the world. Due to corporate restructuring of the vendor, ownership of the trade mark registrations had changed a number of times before they were acquired by the company.

The brand was identified as being critical to the company's business but senior management recognised that there was uncertainty about what was protected and where.

solution
Lincoln IP was able to meet the company's requirements by carrying out an audit of the existing trade mark portfolio in order to provide strategic advice on how the company could strengthen its protection. The ownership status of the registered trade mark portfolio was reviewed and a staged plan was developed for recording the chain of title of the trade mark registrations before the national Intellectual Property Offices.

Several recommendations were made including:

• Expanding the scope of protection in key territories where the breadth of the specification of the existing trade mark registration was found to be inadequate;
• Reducing future renewal fees by consolidating national European rights into Community trade mark applications which claim seniority from the national rights;
• The use of cost-effective international filing options such as the Madrid Protocol system as to increase geographical protection of the brand;
• Tracking competitor activity by establishing trade mark watches; and
• developing and implementing an international trade mark filing strategy;
• Raising awareness of best practice in relation to trade mark use.

key points
1. We have the skills and experience to implement an appropriate strategy for recording complex chains of title in international trade mark portfolios.
2. It is important that trade mark assignments be recorded with the relevant Intellectual Property Offices as soon as possible as lack of recordal may limit the ability of the new owner to enforce its rights.
3. It is important for companies to regularly review their trade mark portfolios as their businesses grow to ensure that adequate protection is in place.
4. We can carry out an audit of your trade mark portfolio to maximise its value to your business and identify areas where costs can be saved.

For more information on our intellectual property services, please contact Karen Veitch on 0141 299 3123 or k.veitch@lincoln-ip.com

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