24 LAWYER MONTHLY NOVEMBER 2024 also assist with transactional matters, including assignments, licensing, and recordals. A robust trademark strategy will inevitably involve both contentious and non-contentious work. It should include checks on the availability of new trademarks, strategic filing, and regular audits to ensure that the required registered protection is in place. Maintaining accurate records is also important, ensuring that trademarks are appropriately held within a corporate structure and that records are correct. This proactive input ensures that the portfolio is in optimal condition for commercialisation opportunities, funding assessments, or potential acquisitions. This is complemented by effective policing, which includes monitoring trademark registers and market activity, both online and offline. When potentially conflicting trademark applications or activities are identified, contentious action may be necessary and establishing a preferred, standard plan of action for addressing these issues with clients, enables us to act quickly and deliver more effective resolutions. What are the key considerations when managing global trademark portfolios, and how do you ensure compliance with varying international laws and regulations? Establishing and managing a global trademark portfolio is essential for any Rebecca Tew: Can you explain the differences between contentious and noncontentious trademark work, and how do these areas impact the strategies you develop for your clients? Contentious trademark work involves a dispute at some level. This will typically be a challenge to trademark rights, opposition to registration, invalidation claims, or an infringement issue arising from unauthorised use. While there may be litigation as a last resort, most contentious cases will involve settlement negotiations or mediation. Most often, contentious work arises as part of the effective policing and enforcement of our clients’ trademark rights. Non-contentious trademark work centres on the identification, protection, and commercialisation of intellectual property (IP) assets. We provide advice and support throughout the whole trademark life cycle, from the selection and clearance of new trademarks to securing protection in relevant jurisdictions. We Strategic searching and filing strategies are key to successful portfolio management.
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