How an innovative and brand-led multinational saved 85% on its trade mark portfolio with Kemp Little’s help

Summary

Background

A multinational IT company, known for their innovation and collaborative working, were spending over £800k annually on their trade mark portfolio with their incumbent attorneys.

This was a significant portion of their legal spend, and therefore prevented investment in other areas.

Despite this level of spend, they still faced some big challenges:

Their creativity and innovation had the side-effect of many unaligned brands that had grown organically
Fast-paced digital transformation and growing data driven services meant their portfolio needed updating and future proofing
The return-on-investment (ROI) from their portfolio wasn’t clear

Kemp Little’s Approach and Solution

Every situation is different, but in this case, we started with:

a thorough review of the existing trade mark portfolio;
a global brand strategy review; and
analysis of the business roadmap and future goals

We advised that a new brand strategy was needed to improve global portfolio coverage while rapidly reducing annual costs.

Our review found some trade marks that were no longer in use, as well as a large number of marks were for non-distinctive or descriptive marks that would be difficult to rely on in the future. Also, because there was little consistency in the specifications, new applications may not have covered all the goods and services in use or intended to be used in the near future.

Results that speak for themselves

With a new brand process and policy in place, which clearly set out the core marks and relevant goods/services for the future, Kemp Little created guidelines for our client on how the marks were to be used, ensuring that evidence of use was collated. This is very important as evidence of use is required in some jurisdictions to enable renewals and is generally needed to demonstrate use and reputation in contentious matters like oppositions, cancellations or infringements.

Our solutions meant that we were able to reduce the annual spend to £250k in the first year. The new brand process and policy we designed brought costs down further to £140k the next year.

That’s a saving of 85%. Alongside the dramatic spend reduction, our client also remarked on the improved quality of advice, improvements in the ease of administration and the benefits of ongoing insight to the competitive landscape.

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About Kemp Little

We work hand in hand with our clients to ensure that they have the protection they needs, for now and in the future, but at a sensible and justifiable cost.

We take a risk-based, commercial approach to trade mark and design portfolio management to ensure maximum ROI.

We are IP strategy experts and award-winning innovators.