by Elena Galletti, Director Marketing & Key Account Management, Brandstock

Following on from our article entitled ‘Top10 priorities to consider when planning your next recordal project’ we are delighted to be able to share with readers the experience of someone who has dealt with a number of major recordals projects.

With more than 20 years’ experience in-house, latterly with Mondelez, and as a past President of the French Trademark Association (APRAM), Clotilde Piednoel has substantial experience in the trademark field and of the challenges of recordals projects.

We are delighted that she was able to speak with us on the subject.

Let’s start by asking where you begin when presented with a business change that triggers a recordals project?

The very first question is whether to record the change? Though one might prefer not to record every change, experience shows that it is always better to ensure that the trademark register reflects the true ownership of a mark. Reasons for doing so include the ability to enforce rights and issues that would inevitably arise as a result of later changes; for example, not recording changes at the time, or only recording some, can lead to problems when key people have left the company with the result that documentation becomes difficult, if not impossible, to obtain. At worst, rights can very easily be lost by not dealing with recordals in a timely and comprehensive manner. The second question is whether the project is to be handled in-house or by an outside provider. Smaller projects might be manageable in-house but anything major, such as the consequences of the Kraft split in 2012 from which Mondelez was created, demands the extensive resources of a specialist provider.

When dealing with recordals in-house, what are the main issues you encounter?

For me the key issues are: being informed and ‘in the loop’ as business changes are under discussion; costing planned recordals projects; obtaining complete and accurate data (e.g. in case of an acquisition, has the former owner provided you with the right information?); dealing with the required documentation and formalities (e.g. powers of attorney and notarization/legalization); communicating with and chasing local agents; setting priorities and dealing with the unpredictable, and yet inevitable, problems that arise; and, finally, docketing (making sure that changes are properly recorded in our in-house IP management system).

What about the demands of recordals projects on in-house resources?

Such projects are very time-consuming and, though necessary, take people away from the arguably more important work supporting the business with current issues. The fact that such projects take many years to complete can also mean that something will be missed along the way.

And what concerns do you have when using an outside provider?

The very first issue is one cost: one always needs a clear and comprehensive cost quotation that is provided quickly. Transparency is essential as management expects detailed budget proposals that stand up to scrutiny. The other issue is docketing; it is vital that the provider is able to ensure that data and documentation is transferred, preferably in bulk, in such a way that it can be easily and accurately recorded in the in-house system.

Are there other issues to consider that apply to both scenarios?

The main ones in my experience are: making sure that you have all the documents you need (such as confirmatory deeds of assignment and proper powers of attorney) as early as possible, preferably by the time the relevant transaction has completed; prioritizing recordals so that, for example, pending applications and renewals are not compromised; and managing collaboration between local agents when changes are needed, such as in the case of an acquisition where agents are usually replaced with the firms used by the acquirer.

You have instructed Brandstock on a number of substantial recordals projects. What are the key advantages you found from working with Brandstock?

There are a number of advantages that I value most when dealing with Brandstock: they are always very quick to provide costings for any project; their costs are modest considering the challenges involved, making it easier to get budgets approved by management who may have overlooked the cost of recordals when planning changes; their recordals teamhas real expertise and maintains an extensive knowledge base; there is a single, senior point of contact for me to deal with; they manage all document generation including individual powers of attorney; and they are able to move data, including related documentation, into any client’s IP system with exceptional efficiency.

More information about IP recordals? Please contact us!