In my experience, while trade mark renewals can be treated as CapEx (capital expenditure that is improving a company’s assets), more value adding work enforcing a trade mark and retaining and enhancing its distinctiveness and reputation isn’t. This may feel converse. Nevertheless, freeing up budget for enforcement matters at Trade Marks Registries or in the online and offline worlds must be welcomed.

It’s not about being dirt cheap. There will always be providers out there in a race to the bottom and this can put your important trade mark rights in danger.

This is also not merely about making only short-term savings.

These are some of the areas that are ones to focus on, in my view, when considering reducing costs around trade mark and design renewals.

Administration

The admin involved in managing trade mark renewals cannot be underestimated. Consider freeing your team’s time up to handle more value-adding tasks while a trusted partner does the work in the background.

Can you also provide a General Power of Attorney? When dealing with a global portfolio, it will often be the case that various documents need signing so if you can pass this administrative burden over it will be a massive time saver. It’s more so when it involves documents that require notarisation and legalisation, and you may even save on external costs too.

Do you need support finding specimens of use? We have VPNs. We have great contacts in countries like the Philippines. We can’t always locate your use, but we can have a good try and do our best to be extra helpful.

Dedication and efficiency

A dedicated team has the knowledge and experience of managing 1000s of rights yearly. In our case, this is 10,000 - 13,000+ a year. As we don’t handle patent annuities, our team is probably the largest in the UK exclusively handling trade mark and design renewals. A skilled team dealing with 100s of trade mark jurisdictions with different requirements and complexities. One able to manage simultaneous recordals, make seniority or replacement requests, and deal with Office Actions, including as part of the USPTO’s audit program.

External disbursements

Of course, filing renewals directly where you can do so would be the cheapest option (if we leave aside the admin and internal costs).

However, savings can be made on the external disbursements with a firm that files a number of direct renewals themselves (and perhaps in territories where you are not able to).

Having a curated global network of agents in place, many that provide volume discounts, is also a way to deliver savings. While this should go without saying, discounts should be passed on to all clients; rather than a selective approach as to whom discounts get handed down to. Likewise, applying fair exchange rates can prevent ‘creep’ on external disbursements.

Official fees do rise from time-to-time. When we’re given notice and it’s possible to renew early (at the lower fees), it’s something we actively pursue. This happened not that long ago for registered designs in the European Union as an example. We are expecting fees to increase in the UK in April (subject to parliamentary approval) and, if it’s possible to pay renewal fees early, we will do so again.

Managing risk

Your trade mark rights are very important, of course. You don’t want to put them at any risk. Part of taking them from out of your team’s responsibility is to get support managing this risk.

Nevertheless, you would want to ensure that a provider of yours has the right checks and balances in place to manage risk. This isn’t just about workflows and processes, although they are important, of course. It’s also about being responsive and on hand to answer queries. It’s about following up to get a Renewal Certificate even if this is going to take years. It’s about quality, training and investing in people so they’re curious to know when something “isn’t quite right”. Our team members have recently gone through our internal Renewals Academy comprising a number of subjects over a few months and two written exams.

A fully regulated firm, and renewal providers do not have to be, will give you comfort that you have an independent avenue of complaint available. They will also have suitable professional indemnity insurance in place. Naturally, we don’t want or expect complaints or claims on our insurance. As a client though, you’ll want this peace of mind.

You can set up renewals to be automatic i.e. they will be renewed if you do not instruct them to allow to lapse by a certain date. With firms that handle more patent annuities than trade mark renewals, this if often the default suggestion. Personally, I find this lazy. It’s often not suited to trade marks and we welcome discussing if this is suitable or do you end up renewing a lot of deadwood and paying unnecessary fees.

We’re not into slapping clients with contracts mandating they use us for, say, two years. We want to provide a fantastic service. In my view, it’s very exposed to be tied to a provider if you then don’t enjoy working with them.

Customised

A regimented approach isn’t going to give you great savings. You’d spend too much time afterwards putting things back to normal. A customised approach will deliver more, for example, that uses your preferred agent in a key jurisdiction.

I’ve spoken about automatic renewals above and it can be nuanced. Your house mark can be set to automatic with product marks only renewed with your instructions, for example.

Making renewal decisions is something you may be well set-up to do, but sometimes you’ll want some advice. Whether that’s advice on a complex chain of title that hasn’t been recorded or an assessment of the risks around your use of a vulnerable registration, as examples, qualified lawyers being on hand will be the best port of call.

Conclusion

Renewals can be big budget trade mark items. We hope this piece provides some food for thought on ways that these costs (internal and external) can be reduced, efficiencies can be made and risks can be reduced.

There are many options out there. If you’re a corporate IP team or law firm exploring an outsourced solution, I’d be delighted to chat with you on a no obligation basis.