Award-winning in-housers answer four simple questions

Earlier this year, WTR hosted the illustrious WTR Industry Awards at an exclusive ceremony at Gardens by the Bay, Singapore. Recognised for going above and beyond in their continued commitment to brand protection, our 2023 winners included the IP teams at:

• Christian Louboutin;
• Dabur India;
• Entertainment One;
• Haleon;
• Mars Incorporated;
• Mengniu Group;
• Manchester United Football Club;
• the Scotch Whisky Association;
• Standard Chartered Bank;
• Starbucks Corporation;
• Treasury Wine Estates;
• Wyndham Hotels & Resorts; and
• Zoom.

To find out what makes their department so successful, after the event, we asked the heads of each of these teams four simple questions. Here is what they had to say.

What makes for a successful trademark prosecution strategy?

Xavier Ragot, group general counsel and global data protection officer at Christian Louboutin: Closely working with the designers, merchandising department, and the visual identity team enables the development of an IP prosecution strategy that is primarily driven by business needs. Collaboration with competent IP attorneys across jurisdictions is essential to navigate local laws and ensure comprehensive coverage. Regular review and adaptation of the strategy to align with evolving legal landscapes and market dynamics can eventually contribute to long-term success.

Saikat Mukherjee, head of legal, and Mudit Raizada, legal counsel for IP rights, at Dabur India: Dabur has a robust system of global watch services which is supported by well-coordinated legal and marketing decisions to apply for new/innovative trademarks which are inherently unique and distinctive in nature. This approach enables Dabur and its various subsidiaries across the globe to possess a strong IP portfolio, which is protected rigorously.

Niall Trainor, senior director of brand protection at Entertainment One: The answer to this is simple – do you really need it and/or will you actually use it? If the answer to both those questions is no, you probably don’t need to file that trademark, or at least can reduce the number of jurisdictions or trademark classes that it covers. Less is more in my opinion. There is nothing smart or efficient about having a bloated portfolio just for the sake of it!

Sophie Bodet, vice president – head of intellectual property at Haleon: In a nutshell, it’s about understanding the business. Your own business of course, both in its current form and future trends, but also understanding the competition. That should allow you to tailor your strategy to business needs, including anticipating future needs, and adapting your portfolio management strategy, to be able to supplement your rights and identify gaps or risks with your own portfolio.

Philippe Claude, associate general counsel – marketing properties at Mars Wrigley: It all starts with a deep understanding of what the business is trying to achieve, both financially and from a marketing standpoint. Then, being involved very early, be part of the conversation to define clear objectives and provide sound, achievable advice. Obviously, for international projects, a good knowledge of local regulations is a must. Then, clearing rights and identifying possible obstacles is a must.

Eugene Ho, director of research and intellectual property at Mengniu: I believe a successful IP registration and prosecution strategy involves the IP team going further upstream of IP creation to empower and cocreate with researchers and IP creators, as well as going further downstream into the business and product sales to enable more successes in IP commercialisation, and maximising the value and returns of intangible assets. Allowing our IP professionals to co-create intellectual property with our R&D, manufacturing and marketing teams enables Mengniu to create higher quality IP and innovations, which [in turn] enables a more seamless and smooth flowing registration process. Similarly, encouraging our IP team to be more involved with the company’s business strategies and product sales progress enables us to formulate more practical and effective IP policies and support to empower the company.

Russ Jacobs, director and managing corporate counsel for intellectual property at Starbucks: Consistency across jurisdictions creates efficiencies in operations and allows the IP group to obtain and maintain protections for the marks that have the most value to the business. As much as possible we make decisions at the family level of a mark rather than for individual filings. The Starbucks IP group aligns its trademark registration strategy with the company’s business plans as well as our enforcement needs. The trademark portfolio should both enable the business plans and provide the necessary tools for successful enforcements.

Anna Olsen, global director – intellectual property at Treasury Wine Estates (TWE): A successful trademark prosecution strategy requires early engagement and forethought, as well as open communication to ensure that there is strategic business alignment. It is important to consistently balance risk versus reward, and cost versus benefit, in line with your business partners, while maintaining a strong perimeter of protection around each brand, product or proposition.

Susan L Crane, group vice president of legal, intellectual property, brands and marketing at Wyndham Hotels & Resorts: Any successful trademark registration strategy must align with company objectives and market development strategies. Our IP team works closely with our regional development leads to identify gaps in the portfolio and prioritise new filings in line with likely development targets and budget restraints. Close communication with the regional teams is essential to understand business needs and manage business expectations around application pendency and potential obstacles to registration.

Lisa Widup, lead counsel on trademark and copyright at Zoom: A thorough clearance process can help identify the issues that may arise in prosecution and help to dictate where and what to file at the outset. Having great outside counsel and access to helpful evidence from the business are essential to prosecution when refusals arise.

What are the key factors to successful enforcement?

Ragot, Christian Louboutin: IP rights are critical assets for many businesses, but you need strong support from the board and shareholders to be able to develop a strategy. It is indeed a bumpy road, so you need your company to back your positions when necessary (human and financial resources for sure but also trust). This enables us to take action against infringers, regardless of their size or influence.

Mukherjee and Raizada, Dabur India: Enforcement requires a farsighted and aggressive approach of the legal department in analysing universal data and advising the business to take strategic calls in the governance of strong IP asset management.

Trainor, Entertainment One: Successful enforcement means prioritising what actions will actually make a material difference to the business. If the action you are taking isn’t making a material difference, then I would query whether that action is a good use of time, resource and money.

Bodet, Haleon: The key factors to the success of an in-house team in enforcing its trademarks is to have a strong portfolio of rights combined with a powerful collaboration with the business. You also need an excellent, trusted and creative network of outside counsel. We are always adapting our enforcement strategy to serve the ultimate business goals. A specificity in the anti-counterfeiting space is the critical cooperation with different law enforcement agencies across the globe.

Building an environment of trust and reliability is key to success when working on anti-counterfeiting. To be successful in your anti-counterfeiting enforcement strategy, you also need to constantly adapt to an evolving environment, including the necessity to adjust your strategy to the needs of a new digital world. Online threats can be at times a priority, but one should not forget that counterfeit products and manufacturing sites are in the real world. Bringing on-line investigations to off-line enforcement operations is key.

Alice Loftus, trainee legal counsel and brand protection executive at Manchester United: As a small team, we are heavily reliant on our global support network; our success is greatly linked to the robust external support that we receive from agents and counsel around the world. We also make sure we are well aligned with the commercial objectives of the business so that they are with us every step of the way in our trademark protection.

Claude, Mars Wrigley: There are no successful enforcement results without strong trademark protection strategies. So, the key factors are first defining a realistic scope of exclusivity that you can reasonably achieve using the family of IP rights (trademark, industrial design, copyright, etc), then be courageous and tenacious in enforcing your rights.

Ho, Mengniu: I believe an in-house team’s success in enforcing its company’s trademarks and IP lies in its forward mindset and proactiveness. An effective in-house team should be constantly thinking about how intellectual property can empower and enable the business to achieve better strategies, successes and outcomes. The team should be deeply engaged in the business to grasp what the core and peripheral intellectual property is, as well as to be able to lead, advise and cocreate strategies with the other business functions in the company.

Lindesay Low, deputy director of legal affairs at the Scotch Whisky Association: Support of the business is key. We are very lucky that the Scotch Whisky companies that fund our work see the long-term value of IP protection rather than writing it off as an unnecessary cost. As with registration, consistency is important, to prevent small issues becoming big ones. Finally, we operate globally and cannot be experts in all the countries where we work so forming long-term relationships with good local counsel is crucial.

Jacobs, Starbucks: Each brand owner will need to align its enforcement approach to the nature of the business and the types of infringement they see. This year the Starbucks IP group developed five pillars to guide its brand enforcement efforts – namely, prioritised, proportional, strategic, brand accretive and collaborative. With a prioritised approach, we develop and implement robust enforcement activities for the core IP assets that define the Starbucks brand. With a proportional approach, we allocate more resources to enforcement activities for core IP assets than for portfolio protection and we take actions proportionate to the nature of the infringement.

With a strategic approach, we proactively identify infringements rather than react to problems as they arise. With a brand accretive approach, our enforcement actions build the strength of the brand. With a collaborative approach, we partner with IP offices, law enforcement officers, customs officials and online marketplaces to raise awareness of the Starbucks brand and assist officials in distinguishing genuine and counterfeit goods. These pillars work for Starbucks, but might not match the needs of a company in another sector or that faces different types of enforcement issues.

Nigel King, head of intellectual property at Standard Chartered: Some key factors may include:

• be open to using technology;
• clearly define what are the areas of concern that must be prioritised; and
• be outcome driven given that funding for enforcement programmes is often finite and subject to justification.

The areas of concern for an enforcement strategy may markedly differ between companies in different industries and could include stamping out counterfeit goods, ensuring a company’s reputation remains untarnished, and satisfying regulatory concerns.

Olsen, TWE: Like so many things in the world of intellectual property, I think this hinges on forethought and early engagement. Securing comprehensive rights and registrations as a priority is obviously a must, as is putting in place appropriate monitoring programmes (online and offline). Consistency is also key to demonstrating the business’ zero-tolerance approach to infringement and to send the right message to the market. You can’t oppose marks one year and fail to do so the next. It is a living and breathing strategy that will require you to flex across new markets, monitoring programmes and online propositions, in order to adequately protect your brand and its reputation into the future.

Crane, Wyndam: Have a clear understanding of the strength of your marks and a realistic approach to enforcement. I think it is important to balance the desire to build a strong portfolio of brands against the risk of becoming a trademark bully. Finding that balance allows you to prioritise truly problematic infringements that actually impact the bottom line, as opposed to chasing every theoretical infringement.

Widup, Zoom: A key component of our enforcement has been using an online brand protection vendor like Tracer to detect and enforce proactively against the numerous infringements that occur online. It’s especially crucial when you have a small team like we do.

How are your enforcement strategies evolving?

Ragot, Christian Louboutin: We relentlessly pursue the counterfeiters, no matter where they attempt to operate. In recent years (with a big acceleration with Covid-19), more and more counterfeiting businesses have moved online, where some may feel invisible or untouchable. Our goal is to prove the opposite. Our proprietary Stopfake initiative, coupled with our zero-tolerance policy, allows us to gather valuable intelligence and swiftly take action, both in the virtual world and the physical realm. Recent years have also witnessed a shift to additional design patents prosecution and enforcement. This strategic move aims to safeguard and further protect the creativity of Christian Louboutin.

Mukherjee and Raizada, Dabur India: Dabur believes and practises in non-tolerance in corporate governance and is very strict flushing out corruption, be it white-collar crime, counterfeiters and/or infringers. Pursuant to this philosophy, Dabur has a well-knitted network of on-the-ground investigators followed by a systematic approach through police officials, custom officials, tax authorities and judicial authorities to take appropriate measures and enforce actions accordingly. Dabur’s goal is to eliminate the problem from the root.

Trainor, Entertainment One: Shifting more and more to online brand protection – that’s where the infringers have shifted to, which was accelerated by the pandemic and the consumers moving more to e-commerce.

Loftus, Manchester United: As many other brands would agree, we are noticing an ever-increasing need to focus on online marketplaces and social media sites. This has been exacerbated by covid lockdowns around the world, and general user movements onto new platforms. As counterfeiters continue to adopt more sophisticated methods to avoid detection, we too need to pivot and look to our providers to innovate to help tackle this.

Claude, Mars Wrigley: Our enforcement strategies are evolving probably by adopting a more holistic approach (online / offline and with local authorities where relevant) and sending strong messages to build a reputation as a company not to tolerate infringements and being committed about it.

Ho, Mengniu: We constantly ask ourselves daily how our IP function could enable and empower other aspects of the business to grow and succeed. As such, we are always discovering new needs and applications of our IP function.

Low, Scotch Whisky Association: Although they have slowed slightly, trademark applications have grown dramatically over recent years, particularly in China. We have had to look at ways to achieve more with the same resource – for example, by scrutinising more carefully which marks are likely to cause consumer confusion and need to be opposed, and standardising pleadings and procedures to save time. We are also seeing increasing complexity in the networks that make and sell fake Scotch Whisky, leading to more use of investigators. This is something that those dealing with brand counterfeiting have had to deal with for a long time, but it is relatively new for a geographical indication like Scotch Whisky. Online is becoming increasingly important too, something which we have not had to consider until recently, and we are spending more time registering our rights with the major platforms.

Nigel King, Standard Chartered: As a global bank, our primary corporate trademark enforcement strategy focuses on supporting the overall reputation management strategy and ensuring the bank’s financial regulatory obligations are satisfied. For example, we deploy tools to materially mitigate the risk that our customers will not be subjected to cybercrime such as phishing and fraud. Some of these tools initiate an automated IP takedown where there are incidences of unauthorised or fraudulent use of our trademarks for phishing activity.

Jacobs, Starbucks: This year we changed our enforcement approach through the development and introduction of a new framework for defining our enforcement priorities based on marks, markets, goods and services, and channels of trade. Furthermore, we refined our enforcement criteria for certain marks to align with business priorities and outcomes in prior enforcement cases. Consistent with our pillar of taking a “proportional” approach to enforcement, we put more resources into infringements that harm our core business or reputation (eg, fake stores). Meanwhile, we try to handle online infringements quickly and efficiently using technology. As we embrace the “collaborative” pillar of our enforcement framework, we have greater focus on partnering with online marketplaces, customs officials, IP offices, and law enforcement officers to stop infringements.

Olsen, TWE: We are frequently presented with the challenge of infringements across new online platforms and marketplaces, which require us to adapt our monitoring programmes and make new engagements and relationships with relevant operators. Infringers are also always finding new ways to seek to misappropriate brand owner’s rights – whether through fringe packaging, misleading marketing campaigns, new sales channels or entering into new product categories. Being across the evolving nature of infringement, and how to identify and tackle it, is a fundamental responsibility of our group. It is both a challenging and rewarding process.

Crane, Wyndham: I believe our enforcement strategy has actually stayed consistent, but the tools we use to identify infringements have necessarily evolved as the nature of infringing activity evolves or better tools and resources have become available.

Widup, Zoom: When I first joined, Zoom was at the height of its newfound popularity so I was busy cleaning up the internet and registries of things that should not be there. Now that the pandemic is over, we’ve seen a change in what people are using and filing, with fewer combining our Zoom mark with services that can be offered over Zoom or goods used in association with attending an online meeting (some of which were fairly entertaining). So our work now largely involves more traditional types of infringement and activities, such as online and in the registries.

Without getting too much into specifics, since I was the first in-house counsel, the monitoring of the register or the internet for infringement had been minimal. When I joined, I partnered with outside counsel and brought in an internet brand monitoring vendor to find what was out there and take steps to assert rights where appropriate and “clean things up”. Now that time has passed and the frenzy around Zoom during the pandemic has subsided to some extent, we are focused on the typical trademark monitoring of the registries and potential infringing uses and enforcement in more of a maintenance mode than the prior initial launch mode we were in when I started.

What makes your trademark department so successful?

Ragot, Christian Louboutin: Our IP team is resourceful and working under one common roof with other HQ departments in the center of historical Paris. Seamless communication and coordination ensure our ability to deliver swift and efficient responses. Dealing with the registration and enforcement of non-traditional trademarks like the Red Sole necessitates thinking outside the box. It compels us to explore uncharted territories and discover new avenues with the assistance of our extensive network of expert counsel worldwide.

Mukherjee and Raizada, Dabur India: Dedicated, business friendly, aggressive attitude coupled with in-depth knowledge of IP laws. Further, quick and effective decision making of the management with clear objectives.

Trainor, Entertainment One: We don’t think like a typical IP team – I’m a commercial litigator and licensing lawyer by trade, but did not start out doing intellectual property. I therefore see intellectual property squarely as a revenue/business issue, not a legal one. It just so happens that intellectual property is the most efficient way of dealing with this specific business issue.

Bodet, Haleon: I truly believe success takes a number of factors. It is the combination of the people within the team; the close connection with the business; the trust, internally within the organisation, and externally with our trusted partners; the leadership; and the commercial mindset. And the fact we love our brands!

Loftus, Manchester United: We are very lucky to have an experienced team with a diverse range of skills and backgrounds, whether that be in intellectual property, trademarks, offline enforcement or online enforcement. As we handle a variety of cases, it’s helpful to be able to draw on this expertise to establish the best approach. Support and engagement from all areas of the business is also key to the successful execution of a brand protection strategy, and we are fortunate to have this support. 

Claude, Mars Wrigley: We have great individual talents, guided by the Mars five principles and a genuine passion for trademarks and marketing properties in general.

Ho, Mengniu: For Mengniu, our success in intellectual property, especially patents, designs and trademarks, lies in the trust, support and mandate from our senior management for the in-house IP team to leverage intellectual property to empower the business, realising the value of our intangible assets and intellectual property, as well as using IP intelligence to enable various business units and our business leaders in decision making. Similarly, with the support of our senior management, the IP team has constantly produced many meaningful outcomes and provided strategic IP support to enable business success.

Low, Scotch Whisky Association: I cannot emphasise enough the support we get from our member companies, both financial and in the practical assistance we get (reporting fakes, transporting bottles for analysis, standing in as plaintiffs). We also try to create an environment where all members of the team feel comfortable about sharing their opinions, so we get as wide a range of perspectives as possible when tackling a difficult issue. And of course, Scotch Whisky is a fun and exciting product made in some of Scotland’s most beautiful locations, so it is easy for the team to be passionate about what we do.

Nigel King, Standard Chartered: I think we are successful because we work in a bold, collaborative and strategic manner with our key stakeholders. It is not enough to be simply trademark and legal experts. We often play a strategic leadership role in helping to develop brand strategies with our marketing and business leads, which is often welcome by them. It’s been shown that decision making that includes inputs from a diverse range of perspectives leads to better outcomes. As trademark lawyers, we have unique skills that contribute to any group mix when problem solving. These include being structured in approach, being able to spot and define issues, discerning facts from opinion, and to stop the gaps or the unsaid aspects of any matter.

Jacobs, Starbucks: The partners (employees) in the Starbucks IP group work collaboratively and with clear understandings of responsibilities. We proactively loop each other in on matters that will impact those people. We also acknowledge that we do not always have the answers and will get things wrong. When we do not get the desired outcome, we look for solutions and improvements.

The Starbucks IP group has spent years developing relationships across the business as well as with peers, service providers, online platforms and government officials. The deep relationships with co-workers across the enterprise have led to close alignment on priorities and strategies as well as trust in the advice we provide. Through our conversations with peers, we benchmark best practices. By collaborating with online platforms and government officials, we learn the ways of making it easy for them to act on our enforcement requests. We sincerely appreciate the good work of customs agents, law enforcement, IP offices and online platforms that face a deluge of infringements. Only through cooperation with these partners can brand owners succeed in their brand protection efforts. The Starbucks IP group works with great law firms and other service providers. We recognise where our skillsets and capabilities end and let outside counsel, investigators and other vendors do what they do best.

Olsen, TWE: We are a close-knit team that genuinely respects and looks after each other, and we have strong relationships across the business, and with external stakeholders, which ensures that we are proactive and responsive to new matters, and acting in line with broader commercial and industry strategies. We genuinely love what we do and the brands that we protect, and we feel recognised and supported by the business and our leadership team – which is a great motivator for going above and beyond in seeking to meet our objectives.

Crane, Wyndam: The Wyndham team is made up of highly skilled professionals who have all been with the company for many years, so we understand not only the legal aspects of the job, but the business priorities, and the corporate culture – which is defined as “Count on Me!” in which team members are encouraged to be responsive, be respectful and deliver great experiences. As a result, we are able to partner closely with our marketing and development colleagues to help them achieve their business objectives.

Widup, Zoom: The key to success has been focus and determination; when I arrived just two-and-a-half years ago, we had only a handful of registrations, and now we are close to 300 registrations around the world with many more pending applications. We needed to quickly determine a strategy to effectively lay the foundation for Zoom’s portfolio so it can grow successfully as quickly as the company has grown and changed.

WTR is already accepting nominations for next year’s Industry Awards. The nomination window will remain open until 8 December 2023. Fill in our brief survey to ensure your colleagues get the recognition they deserve.