Taking on a Trade Mark Audit: essential tools for success
Most of the trade mark administrators and paralegals we know have a fondness for order and precision, experiencing a deep sense of satisfaction when they know their records are fully accurate and up to date. Just imagine that state of nirvana, when every date is accurate, all updates have been entered, trade marks are being used consistently and correctly, and there are no unpleasant surprises around the corner. There’s nothing like a missed renewal deadline or office action that has been overlooked to destroy your peace. This is something that is always so important to do when taking on a new portfolio, be it from a client or a recently acquired business or brand.
If you have an inkling that your trade mark records might not be in the pristine condition they could be (particularly if created using data that’s not originally yours!), or that the marks are not being used in quite the right way, it is time to undertake a trade mark audit. In fact, even if you are confident in your records and use, it is best practice to conduct regular audits of the trade marks registered to your business and assess the result against your company’s IP strategy and future plans, to ensure the two are in alignment.
The goals of a trade mark audit are:
- To make sure that trade marks are being properly used by the business and that they are adequately protected in all the relevant classes and jurisdictions. To check that there are no gaps that could expose the business to unnecessary risk of challenge, infringement, or cancellation.
- To verify that the records stored in your trade mark portfolio management system accurately reflect the actual assets of the business and there are no errors or omissions.
Conducting a trade mark audit is a chance to streamline your portfolio. If you have marks that are no longer in use, or no longer match the classes in which they’re registered, you can eliminate them from your portfolio to avoid trade mark sprawl and unnecessary administration.
On the other hand, if there are new brands and products under development, now is a great time to engage with all the stakeholders in the business – such as product design, marketing, and sales – to find out what is coming down the line and what new marks or designs should be registered.
To that end, it is advisable to advertise within the business that you are undertaking a trade mark audit and explain the reasons for it. You’ll raise awareness around the topic of correct trade mark use and ensure that those using them know where to go for advice should they need it. The audit should include a review of all materials that use trade marks, such as packaging, websites, social media, and advertising. Inconsistent mark use can weaken a brand and leave it open to challenge, so getting this right is essential.
Auditing trade mark records
Accurate trade mark records form the basis for your brand protection strategy, so it is essential to check that they are completely correct. If you have a large portfolio of marks and registered designs, this can be a daunting and time-consuming prospect.
WebTMS has several features that can be used to simplify and streamline trade mark audits. The most powerful is our Data Sync facility. Data Sync creates a direct link between your trade mark records and the official trade mark data in over 180 jurisdictions. Records are automatically updated to reflect changes in official data, so every time an application progresses to the next stage, or a new registration is completed, your records will change correspondingly.
If you’re not a fan of automation, or prefer to have more control, there’s also the option within WebTMS to conduct an audit on a one-by-one basis, using the audit function within each record, or you can do so by eye against the registry – made a step or two quicker using the Link to IPO option.
We also offer multiple search options, such as “search by action”, which allows you to identify any deadlines or internal action dates that are missing from records. A search on all pending trade marks that do not have any actions (such as deadlines or reminders) listed would highlight records that are not complete, for example. Once you’ve conducted the audit on a record, you could then add a Memo or Note on the record to allow you to view when a record was last audited, as well as run reports or searches based on that data input. As with all WebTMS records, the more data you enter, the more data you can get out!
Other key areas to include during a trade mark records audit include:
Date management: with variations between date formatting between e.g. the UK and the US, it’s important to check that all dates are in the correct format for their jurisdiction.
Data cleansing: even the most rigorous records system occasionally gets duplicate data or variances in how company information is recorded, for example. WebTMS has a duplicate data removal tool and an audit is the perfect time to put it into action to ensure your data is as clean as possible.
Version control: The trade mark record should show the evolution of the mark over time with clear version control. It is especially important for portfolios with recordal chains that modifications can be traced and, if necessary, reversed.
Conducting regular trade mark audits and reviews is a vital activity for robust trademark portfolio management. Keeping up to date with how the marks are being used by marketing and product teams avoids gaps in protection, while checking records themselves helps avoid errors and oversights that can prove costly and cumbersome. With the tools and services available today, auditing trade marks can be a much quicker and more accurate process.
If you’d like to find out more about how to effectively audit trade mark records within WebTMS, get in touch with our client team.