By Anna Popova, Director IP Recordals, Brandstock
Is your corporation involved in a planned or recent merger or acquisition; divestiture; renaming; or some other restructuring that will impact your IP portfolio? If so, you may well be asking yourself how best to approach what may be a daunting project?
Our clients often ask us how to prioritize the management of large recordal projects. Based on our experience, these are the top 10 priorities you must consider when organizing a change recordal project:
- New Filings – do you have any new filing projects either in progress or in the pipeline, such as in the name of a new owner? If so, it is important to identify the countries involved and to prioritize them in your recordal project in order to avoid unnecessary citations or office actions from examiners due to inconsistencies in trademark ownership on record. (This issue will come up in a large number of countries, many more than you likely expect, and includes even address discrepancies in some countries!)
- Renewals – do you need to file any ownership or name changes in advance of the renewal deadline? Do you want to renew the trademark in the new owner name? The answers to these questions will vary depending on the nature of the change; the documentary requirements in a given jurisdiction; the timeline for the change; and the renewal deadline. It is important to consider renewals when setting your priorities so as to avoid filing a renewal incorrectly (and thus endangering the registration).
- Customs recordals – in some countries, your goods may be seized at customs if the trademark ownership information is not current. This is particularly the case if you are actively filing recordals with customs. Be sure to prioritize any countries where you may expect issues with Customs.
- Late filing fee countries – a handful of countries impose fines for the late filing of ownership changes. When the clock starts ticking, and the timeframe, depends on the country – this could range anywhere between 4 weeks and 12 months. Fees may compound, making your simple change of name recordal inordinately expensive if you wait too long. (Examples included in our paper 9 Hidden Costs)
- Licenses – do you have license agreements in place in a particular country? If so, discrepancies between the licensor and the registered IP owner can result in delays or non-payment of royalties and other financial consequences. Be sure to prioritize these countries in your recordal project to avoid problems that can have an immediate financial impact.
- Key territories for the business – what are your key territories? Depending on the country and your position in the market, you may choose to prioritize certain countries to ensure your project plan (and budget!) are in line with the needs of the business.
- Territories with legal proceedings in progress – do you have any “active” territories covered by the recordal project with ongoing litigation, oppositions or other such legal matters involving IP rights? If so, you should prioritize this recordal work – having an incorrect IP owner on record may cause problems for, or even be fatal to, such proceedings.
- Associated TMs / All-or-nothing (Change of Name/Address & Merger only) – there are countries where due to local legal requirements special attention must be paid to “similar” trademarks when there is an Assignment of rights. Likewise, there are a handful of countries requiring all IP rights in the name of an entity to be updated simultaneously. Giving these countries priority will help avoid issues down the road with new filings, renewals, etc.
- WIPO – do not forget your international registrations! For example: if you file the change in China, but do not file the change against the International Registration designating China, then you will likely receive an office action from the examiner in China. While you may not encounter this problem with the national PTOs for all countries designated by the IR, you will surely encounter it in a few key territories, which should be prioritized in your recordal project.
- Are there any further planned changes on the horizon for the corporations involved? For example: Is the Assignor or current IP holder foreseen to undergo a name change, merger or be dissolved entirely in the near future? Are there any other known divestitures on the horizon? Will the entity remain under your corporation’s ownership, or will it be part of the divestiture?
There is a great deal to consider when kicking off your recordal project. Brandstock can help you to navigate these complexities efficiently and successfully.
In case you are not able to pursue all changes in one go, there are still solutions and options for you to prioritize the work to help minimize the risk of problems down the road. (See our paper Project v. Piecemeal for arguments to support you in securing budget to conduct your work as a project).
For further information on the points listed above, please feel free to contact us at recordals@brandstock.com.
We are happy to share our expert knowledge gained over our many years of experience to help you kick off your project and ensure a smooth recordal process.
