World Trademark Review - Edital

Issue 34 December/January 2012 

www.WorldTrademarkReview.com 

Also in this issue... 

Lessons from the BBC’s approach to trademarks 

How to protect fictional brands in the real world 

What the Interflora decision will mean in practice 

Letters of protest – the forgotten trademark tool 

Fit for purpose? Proposals to reform TRIPs revealed 

World 

Trademark 

Review 

Winning service 

Is the trademark services industry meeting the needs of users?

24 

Feature 

By Trevor Little 

At your service 

Budgets are shrinking, workloads are rising and infringement is omnipresent. Against this 

background, accessing strategic non-legal trademark services has become increasingly crucial. 

But how is the industry meeting user demand and what does the future hold? In an exclusive 

survey, WTR polled trademark professionals for their thoughts on how the sector is matching 

up to their expectations, and put the responses to service providers 

World Trademark Review December/January 2012 www.WorldTrademarkReview.com

www.WorldTrademarkReview.com December/January 2012 World Trademark Review 25

Feature: Winning service 

In February 2010 WTR conducted its annual Global Trademark Survey, 

asking in-house counsel and private practitioners for their views on a 

range of issues facing the industry. One element touched on was the 

offerings of non-legal trademark service providers. This sector is itself 

a broad church, so this year WTR decided to delve deeper into both the 

services currently offered and how practitioners view the industry in 

general. In particular, four main sub-sectors were identified for 

analysis – portfolio management software, renewals and recordals, 

searching and watching. The main emerging themes were then put to 

a range of service providers, to allo w them to directly address user 

comments. 

While this article focuses on the im provements that users would 

like to see, drilling down to reveal where service offerings can be 

improved, a natural starting point is to gauge the prevailing sentiment 

towards the industry. In this respect, the picture is broadl y positive. 

WTR asked users to rate their service providers on a scale of one to 

10 (with 10 the most positive) on a range of c riteria within the four 

main sub-sectors. The results predominantly fell within a scale of six 

to seven – the exception being portfolio management software 

offerings, where software flexibility and customisability was rated 5.4 

overall and likelihood of recommending a current provider 5.9 (see 

tables on pages 28, 30, 32 and 34). Man y of the comments made 

alongside the questions were favourable – in some cases naming 

specific individuals who worked well with their clients. But in other 

areas there was also consensus on the types of im provement that the 

industry could make, as well as potential areas for exploitation by 

service providers. 

The price is right? 

Analysing the criteria against which users make their purchasing decisions, 

price and customer service (including ongoing support) perhaps 

unsurprisingly head the list (see table on page 29). Gi ven the current 

economic climate and the continuing budget squeeze that has many 

counsel in its grip, price is likely to remain a concern going forward. 

Gripes included hidden fees, unclear pricing structures and being 

charged for “everything, even for small administrative work”. One user 

explained: “I have inadvertently ordered products I didn’t even know I 

was buying – in part due to my unfamiliarity with changes to the 

supplier’s online system; in part because their system is perhaps not 

as transparent as it could be.” 

Methodology 

The survey process: Over a two-week period, between August 30 and 

September 13, WTR ran an online survey designed to build up a 

complete picture of the trademark services market and how it caters to 

user needs. The research focused on the trademark services sector as 

distinct from the legal services sector, relating specifically to searching 

and watching, trademark management software, and renewals and 

recordals. 

The survey form consisted of two main parts. The fir st asked 

respondents to identify and rate, on a scale of one to 10, the services 

they receive across the sectors examined. The second part consisted of 

a range of questions about the industry in general terms, and how 

users see the sector developing. 

The survey was open to in-house trademark counsel and private 

practitioners, and was promoted through the WTR blog and dedicated 

mailshots to trademark professionals. In total, WTR received more than 

1,000 submissions. 

Editorial policy: WTR treated all responses as confidential and has not 

disclosed any respondent’s comments or details to any third party. 

26 

There was also concern over fee hikes for any customisation or 

broader searching capabilities, “which makes it cost prohibitive to take 

advantage of”. 

James Lacey, head of trademark renewals at CPA Global, argues that 

despite the pressure on budgets, purchasing decisions should be made 

not purely on cost, but rather on a recognition of all poten tial benefits: 

“At a time when organisations are under increasing pressure to 

optimise the value of their assets and reduce costs, trademark services 

developed by an effective strategic partner should provide clients with 

flexible solutions that can be tailored to integrate with and improve 

their existing workflows, helping increase efficiency while ensuring 

quality and reliability. The most effective partnerships are where the 

service provider is viewed by the client as – and acts as – an extension 

of the client’s own team.” 

With budgets being slashed across the board, it is natural that 

added value has become a buzzword among service providers, 

particularly as competition in the industry hots up. 

Stephen M Stolfi, vice president, global sales and strategic 

partnerships at Corsearch, notes: “We understand that cost often plays 

a key role in decision making, and differentiate ourselves with the 

value we offer. For legal professionals, time is extremely important, 

and with better quality, accuracy and workflow tools, legal 

professionals not only save time, but provide a better result to their 

own clients.” 

For Thomson CompuMark, a key USP stressed to prospective and 

existing customers is track record. Martin Burke, managing director, 

explains: “We highlight our trademark experience and the fact that we 

have been providing leading trademark solutions to corporations and 

law firms around the world for several decades.” 

Reinhold Nowak, chief executive of Dennemeyer Group, echoes 

this sentiment: “Good trademark services are based on exper ience and 

knowledge; therefore, trademarks should be entrusted to providers 

who are stable and established in the business.” 

Kimberly Wieland, senior director of trademark services at CSC, 

acknowledges that “in today’s market, price is always at the front of most 

consumers’ minds”, but similarly emphasises that consideration needs 

to be given to what you are getting for your money: “We stress to 

potential customers that they should look at the product being offered, 

the flexibility of the company they are looking at to customise work 

product for them and, of course, who will be servicing their account. 

Responses used in the magazine coverage of the results have been 

quoted anonymously and not attributed to any particular individual. 

Tables of service providers: In the service provider ratings section, WTR 

suggested a number of service suppliers that respondents might use 

(with product names cited according to confirmation from those 

suppliers). Once the survey closed, WTR reviewed the responses to 

ensure that only the views of qualifying individuals were included. In 

addition, all results were analysed to ensure that in instances where a 

respondent named a product or company in the ‘other’ box, product 

names were aggregated under the correct company umbrella. 

Given the nature of the industry, a wide spread of companies were 

named and rated by respondents. Rather than giving every company 

cited a rating (some of which would be based on onl y a handful of 

ratings and others on 100-plus ratings), WTR decided to provide ratings 

for the five companies which received the most feedback in each 

category, to ensure the integrity of the data. The tables of services 

suppliers thus should not be regarded either as exhaustive in each 

sector featured or as an endorsement by WTR of the companies cited. 



Portfolio management software 

Respondents were asked, on a scale of 1 to 10 (10 being the highest), how they rate the company they use for portfolio management 

software on the following criteria (only the five companies most rated by WTR survey respondents appear below, although an overall 

industry rating is provided for comparison) 

Industry average rating 

The software's performance and reliability 6.7 

The software's flexibility and customisability 5.4 

Customer service and support 6 

Likelihood of recommending this provider 5.9 

Performance and reliability 

IPPO (WebTMS) 7.6 

Patrix / Patricia 6.9 

Computer Packages Inc (CPi) 6.6 

Thomson Reuters / Thomson IP Manager / IP Mas ter / PC Master 6.6 

CPA Global / Memotech / Inprotech / FoundationIP 6.2 

Flexibility and customisability 




CPA Global / Memotech / Inprotech / FoundationIP 6 


There are many great online products out there – what sets you apart is 

the people who support the customers in using those products.” 

Full service 

This leads to the second c riterion that buyers cited – customer service 

and ongoing support. Interestingly, this was regarded as more 

important than the software and systems offered, suggesting that 

buyers want to feel that, having made the purchase decision, an 

ongoing relationship will help them to maximise the effectiveness of 

the tools available. 

As a result, there was some frustration at the way that revenue is 

seemingly prioritised by service providers, with some users feeling 

that more attention is directed towards winning new business than to 

taking care of existing clients. 

One experience shared by a number of respondents was a shift in 

the nature of their relationships once a contract had been signed, 

with key contacts moving on and relationships quickly drifting to 

arm’s length. 

The in-house counsel at one North American company recalls: 

“The first person we dealt with was very knowledgeable and 

understood that, as a private company, we were relying on their 

knowledge and ability. The person we now deal with does not appear 

as knowledgeable or as willing to help or explain information to us. 

When I ask questions on information sent to us, he literally reads the 

information sent to us. I have repeatedly stated I know how to read, 

but want a clarification or explanation of the information.” 

Perhaps unsurprisingly, when WTR put this complaint to service 

providers, their unanimous response was that considerable emphasis 

is placed on customer service and the clien t relationship. Wieland, for 

instance, insists that at CSC, continuity of contact is at the heart of 

28 

Customer service and support 






Likelihood of recommending this provider 

IPPO (WebTMS) 7 





their account relationships: “When we pitch a new client, we involve 

the representative who will actually service the trademark account. 

This is a relationships business – and people want to know and trust 

the people who are servicing their accounts.” 

Miriam Hölscher of SMD Markeur, meanwhile, points to staff 

retention to allay fears about the loss of established personal 

relationships, with provision made for knowledge transfer when staff 

do leave: “The average experience of our employees is more than 18 

years. When an employee retires, he always has to train others for a 

long time before leaving, in order to transfer experience to younger 

staff. The person who manages the customer relationship is also in 

charge of observing the work process and the quality of the resul t.” 

Thomson CompuMark boasts similar staff retention levels – the 

average number of years that customer care representatives have 

spent with the company is 16 in Europe and 14 in the United Sta tes. 

Burke adds: “We are dedicated to hiring and retaining knowledgeable, 

friendly and attentive staff, and service representatives go through 

several months of training in order to provide superior customer 

service. It is because of this th at they have a deep understanding of 

clients’ trademark needs and challenges, and have in-depth knowledge 

of our products and services that will benefit this need.” 

Interestingly, Dennemeyer’s Nowak warns against over-reliance on 

one point of contact: “In trademark services the personal touch is, of 

course, important. Nevertheless, the provider has to make sure that 

specific requests are fulfilled by relevant experts. At Dennemeyer, 

then, clients have a personal key contact, but also experts for specific 

countries and national requirements.” 

At the heart of this issue lies the tension betw een the need for a 

tailored, personal solution on the part of users and a desire to 

operate within the parameters of existing sy stems on the part of 


Table 1. What are the top criteria on which you base your decision 

when purchasing trademark services? 

Price (1506 points) 

Customer service and ongoing support (1414 points) 

Pre-existing relationship with law firm or company (1089 points) 

Software and systems, including integration and (856 points) 

compatibility with other systems 

Flexibility (761 points) 

Level of local knowledge (698 points) 

Word of mouth/recommendation (641 points) 

Transparency of fee structure (624 points) 

Degree of global presence (530 points) 

Length of time in the marketplace (448 points) 

Extent of liability accepted (327 points) 

Respondents were asked to choose only their top five criteria. 

To calculate the ranking of importance, each time a criterion was 

ranked first it received five points; each time it was r anked second it 

received four points; if third it received three points; if fourth it 

received two points; and if fifth it r eceived one point. 

service providers. 

Buyers of trademark services value a close, personal relationship 

because they need to feel that their particular needs are being ca tered 

to, rather than having them folded into existing systems and 

processes. 

One survey respondent argues: “Companies don’t seem to give 

enough time to understanding the client’s issues. They think they 

know it all. But maybe sometimes a client doesn’t only require a 

different approach – they may require a radical solution. Perhaps the 

client just needs a smaller package of whatever services the provider 

is ready to offer. It is time to move with the clients. The age of the 

service provider is passing by quickly and they must adapt to the 

clientele.” 

Of course, where individual solutions are required, rather than 

simply a scaling down of the services offered, flexibility can h ave an 

impact on cost; in today’s competitive environment, this perhaps 

explains why solutions are often sought in existing offerings. But such 

an approach can have a deleterious impact on the user experience. 

One in-house counsel complains: “Many talk down to me. I’m not 

a big law firm and I’m not e ven a big user of services – we’re expected 

to conduct most work in-house and very economically, which we do. 

So I’m seeking someone who can provide me with the services I need, 

not everything they sell. Further, I am actually very knowledgeable 

about my profession and very involved in its evolution and 

management; the last thing I like is to have a service provider talk to 

me like I don’t know anything.” 

Developing the know-how 

Of course, the one area where service providers do have deeper 

knowledge is in the ‘hows and whys’ of their particular systems and 

processes – and it is here that help is often most appreciated. One 

respondent identified a clear need for experts to “assist people who 

are not as technologically adept as them”, while another admitted: 

“I’m finding that the technology is now almost too advanced and hard 

to keep up with. There are a lot of fea tures available that we just do not 

take advantage of.” 

In this regard, training both on initial use and after subsequen t 

software updates was highly valued (albeit with some complaints 

where this generated additional costs). Equally important is user 

feedback at the development stage, as any system should be built 

according to the needs of the poten tial user. 

WTR therefore asked how systems are currently developed 

– specifically with regard to the involvement of trademark 

professionals and users. 

Glen Nath, senior vice president, professional services, CPA Global, 

responds: “Once internal testing is complete, a beta version of our 

product is released to key clients, who test every area of the product 

including all aspects of trademark prosecution. The testing is done by 

both attorneys and administrators.” 

Stolfi likewise states that Corsearch involves customers in market 

research, workflow analysis and platform testing: “Software upgrades 

are initially tested by the software development team which conducts 

unit tests, shake-out tests and integration tests. This is followed by 

quality assurance testing to check for errors across different scenarios 

and conditions. Finally, user acceptance testing is conducted by an 

internal group of users who are very knowledgeable in the trademark 

industry, in order to confirm that the system meets mutually agreedupon 

requirements.” 

Hölscher adds that SMD Markeur’s searching and monitoring 

always pass through several selection steps conducted by different 

individuals, and that “monitoring is adapted to the client’s needs 

during an initial phase”. 

For CSC, according to Wieland, “the majority of our product 

improvement ideas come directly from our customers, and we involve 

them in design and testing before release”. 

While buyers welcome providers’ efforts to minimise costs, 

there were concerns that these can backfire when directed at 

personnel. A sophisticated understanding of trademark law is 

crucial to the supply of strategic advice, and such expertise 

inevitably costs more for providers in terms of salaries 



Renewals and recordals 

The cost issue is of particular concern for small companies and solo 

practitioners. Barbara Cookson of Filemot Technology Law, which licenses 

the Marco IP management system to a small client base, says: “If you use 

many of the renewal services, you have to give them your entire portfolio 

and the bigger it is the less you pay. This is terribly discriminatory for 

small firms.” 

CPA Global’s Lacey admits this is a problem, but suggests that solutions 

are available: “An effective renewals provider should be able to target and 

cater for a large and diverse client base. We recognise that practitioners 

with smaller portfolios may not have access to an extensive local agent 

network and therefore are less likely to able to leverage buying power when 

undertaking renewals. However, an effective renewals provider should be 

able to apply negotiated rates to all clients - irrespective of the size of their 

portfolio.” 

Dennemeyer’s Nowak acknowledges that prices are based on portfolio 

size, but adds that customer service remains of a similar standard - if not 

more personal, because “smaller entities put a lot of importance on a close 

and personal relationship with their service provider. So we offer a customised 

renewal service, one single key contact, regular calls and visits.” 

Thomson CompuMark’s Burke also highlights customisation as key 

for smaller clients, as it “allows practitioners of any size to improve their 

workflows”. He adds: “The majority of our tr ademark renewal clients 

have portfolios of 500 or more marks. The primary reason for this is that 

with larger portfolios, there tends to be a broader range of jurisdictions 

and a greater need for experienced external assistance. Organisations 

with smaller portfolios typically opt to manage their renewals 

independently, utilising our software and deep rules content, rather than 

hiring us to do it for them.” 

Instead of tailoring existing systems, the demand for dedicated services 

for smaller practitioners is one that specialists are also increasingly looking 

to meet. Cookson argues: “Most renewal service providers provide a service 

by managing the due dates and sending reminders. If you have a good 

docketing system, you don't need that service, let alone want to pay for it to 

be duplicated.” 

One company that therefore offers an ‘on-demand’ renewals service is 

Envoy International. Chief executive David Kennedy explains: “Our 

customers come to us when they have one or more renewals to be paid. 

They then can control when and whether to instruct us.” 

The obvious question to ask is how the company can offer a service cost 

effectively, given that users cannot leverage economies of scale in the same 

way as larger organisations. Kennedy responds to this query by outlining the 

main reasons. The first is that while the customer may be supplying a low 

number of renewals, the client base as a whole creates critical mass for the 

company. The second is the automation built into the software interface. 

Crucially, though, Kennedy notes: “Our customers are IP professionals who 

generally have their own case management software and know the subject 

matter – they don’t need us to tell them when cases are due for renewal or 

what classes the marks are registered in. They provide us with accurate 

details exported straight from their management software and we process 

the renewal payment.” 

In this regard, the service is a simple transaction carried out on an ad 

hoc basis. While this means that the onus is on the user to ensure that it 

keeps on top of its records and due dates, by stripping away value added 

services or offering an integrated software system, the service can be 

offered at a lower price. 

Respondents were asked, on a scale of 1 to 10 (10 being the highest), 

how they rate the company they use for renewals and recordals on 

the following criteria (only the five companies most rated by WTR 

survey respondents appear below, although an overall industry 

rating is provided for comparison) 


Technical and legal expertise of this service 6.4 

Ability to reduce your administration burden 6.4 

Customer service and support 6.3 

Likelihood of recommending this provider 6.3 

Technical and legal expertise of this service 

Patrafee / Patrawin 7.6 

Thomson Reuters / Thomson IP Management Services' 7.2 

Trademark Renewal Payments (formerly MDC) 


Dennemeyer 6.6 

CPA Global 5.6 

Ability to reduce your administration burden 


Thomson Reuters / Thomson IP Management Services' 7 





Customer service and support 


Thomson Reuters / Thomson IP Management Services' 7.1 







Thomson Reuters / Thomson IP Management Services' 7 





30 World Trademark Review December/January 2012 www.WorldTrademarkReview.com

Thomson CompuMark, says Burke, practises “user-centred design 

in developing and enhancing products”, with user input utilised in 

product development; customer consultations also occur throughout 

the development lifecycle. 

The situation at Dennemeyer is slightly different, as the company 

also uses the system itself for trademark renewals, recordals and other 

law firm activities. Therefore, explains Nowak, “all updates are first 

tested internally by two staff members with more than seven years’ 

renewal experience. After first release, members of the Dennemey er 

Group staff work internally with the upgraded software before it is 

provided to clients”. 

Of course, having to get to grips with a new system is not always 

the end result of proactive changes in service supplier. There have 

been several consolidations within the sector of late: last year 

Corsearch acquired Edital, and as this piece w as being written CPA 

Global announced the acquisition of Ipendo – an IP management 

software and service provider with a strong presence in the Nor dic 

region – from the Zacco Group consultancy. Sometimes a change in 

ownership simply means business as usual for users of a particular 

system; but for others it can be more taxing. 

One private practitioner from North America told WTR: “For years, 

we were using an absolutely amazing trademark search and watch 

software operated by an independent company. We loved it – it was 

completely user friendly, had a simple interface, was very flexible and 

produced great customisable reports. What happened? Another 

organisation bought the company out and replaced it with the worst 

product I have had the displeasure to use in years. This is classic 

stupidity.” 

In such instances, rather than embracing the new system, the 

customer might well re-evaluate its relationship with a provider and 

choose to retender its business. 

An expert touch 

When outlining the criteria that influence purchasing decisions, several 

service suppliers mentioned the notion of forging strategic partnerships. 

However, many users are sceptical as to whether this is being achieved in 

terms of the depth of trademark knowledge required. 

While buyers welcome providers’ efforts to minimise costs, there 

were concerns that these can backfire when directed at personnel. A 

sophisticated understanding of trademark law is crucial to the supply of 

strategic advice and such expertise inevitably costs more for providers 

in terms of salaries. 

One African-based in-house counsel suggested that “suppliers 

should employ trademark attorneys and improve the quality of the 

services. Let’s take, for example, searches. Increasingly, we prefer to order 

availability searches with legal opinion”. 

Legal expertise is also important in informing search 

effectiveness; if this is missing, the quality of the resul ts will 

inevitably suffer. One respondent cited the example of failing to 

include cancelled or abandoned registrations and applications in the 

United States, where the marks might still be in use and could 

therefore still pose a risk. 



Searching 

Respondents were asked, on a scale of 1 to 10, how they rate the company they use for searching services on the following criteria (only the 

five companies most rated by WTR survey respondents appear below, although an overall industry rating is provided for comparison) 


Quality of date you receive from the provider 7.2 

Flexibility and usability of search results 7.1 

Linguistic capability 6.8 

Likelihood to recommend this provider 7.1 

When quizzed on searching offerings, users voiced concerns about both the 

comprehensiveness of searches and the sheer number of hits r eceived. 

On the issue of false hits in both watch services and trademark 

searches (ie, where there may be some putative basis for similarity, but 

simply no basis for commonality from an enforcement perspective), 

Burke responded that “hit selection is a critical piece of overall product 

quality”, and that Thomson CompuMark’s “approach is to provide 

relevant information (including identical matches in/out of class, 

phonetic and conceptual similarities) to aid decision making. In many 

cases, we develop search/watch strategies directly with clients and 

customise their reports to their particular needs and requirements”. 

At CSC, data is reviewed with analysts before it is published to 

clients, which Wieland says allows the company “to eliminate many of 

the false positives and the data dumping that may occur with other 

watching and trademark searches. Our goal is to deliver actionable data 

– not piles of data that our customers must wade through in order to 

find the relevant records or notices”. 

At CPA Global, supply search reports are handled through a third party, 

but La Rooy similarly stresses the human element incorporated into the 

company’s watching solutions, using “multilingual watch analysts trained 

and experienced in detecting trademark infringements that computer 

technology cannot detect. We do notify on marks commonly missed by 

computer technology and reduce the amount of marks of no r elevance.” 

The above suggests that activities are not purely automated, which 

should go some way towards allaying the concerns of those who sometimes 

suspect that a human eye might be missing. But of course, human expertise 

is also a contributor to cost – something that is unavoidable in this respect. 

Interestingly, the picture for service providers is complicated by the 

divergent demands of in-house clients and priv ate practice users. One 

of the latter stated: “In the search system, I would like to be presented 

with a larger number of results, so that I can be responsible for filtering 

them and presenting to the client what I deem mos t important.” In this 

scenario, the human element comes into play externally from the service 

provider; but overall, the demand from users is for trademark expertise 

to be applied to results, leading to an informed set of hits. 

In terms of advice, however, a North American pharmaceutical 

company lawyer points to a reluctance on the part of service providers to 

get too involved: “We have overall been pleased with our service 

providers. However, sometimes it seems it’s difficult to get a real feel for 

local practice issues because there is a tendency for service providers to 

offer black letter, conservative advice rather than work with the client to 

think outside the box. I realise there are issues of liability th at may dictate 

the service, but I believe most clients understand and appreciate risks 

sufficiently to undertake this sort of dialogue.” 

And providers do seem to perceive the need for such focused 

expertise. Corsearch’s Stolfi states: “All of our staff go through 

extensive customer service training and also con tinuing trademark 

education, so they have a complete understanding that the work they 

provide is a critical component of our customer’s business.” 

32 

Quality of data you receive from the provider 

Avantiq / Inspiro 7.7 

Corsearch / Edital 7.6 

Thomson CompuMark (from Thomson Reuters) / SAEGIS on 7.2 

SERION / Thomson CompuMark Trademark Searching 

SMD Markeur 7 

Onscope 6.3 

Flexibility and usability of search results 





SMD Markeur 7 

Onscope 6 

Linguistic capability 



SMD Markeur 7.1 



Onscope 6.6 


Avantiq / Inspiro 8 




SMD Markeur 7 

Onscope 5.7 

Lacey additionally stresses the role that project managers play at 

CPA Global: “From the outset, we provide each client with a project 

manager to ensure a smooth transition of w ork. From then on, each 

client has a dedicated point of contact who has specialist trademark 

knowledge and experience. Regular account reviews are undertaken to 

monitor service delivery and to respond to changing client needs.” 

In practice, this expertise translates into reports that both are 

detailed and, crucially, deliver results that highlight the marks truly 

worth citing. In this regard, service providers should avoid presenting 

results with a high risk indication just to be on the safe side, bu t rather 

winnow things down via commercial assessment. 

This critical aspect of the reporting function is in the interests of 

service providers, as it can have a direct impact on repeat business. One 

European private practitioner noted: “No one service provider is perfect 


– with both of the main providers w e have used, important details have 

been missed from reports, creating tremendous difficulties for us. I find 

myself now comparing results often between two providers to be sure I 

have obtained the best possible results. Overanxiety not to miss 

anything means that some comprehensive searches contain completely 

irrelevant data, which costs time and money to rule ou t of the equation. 

Increasingly, this is happening with both search and watch services, with 

the risk that the costs involved will mean clients are less likely to 

undertake searching and watch services.” 

Of course, in terms of the na ture of reports, service providers 

themselves experience difficulties in accessing comprehensive data 

from national offices. One private practitioner from Africa notes: “The 

accuracy and effectiveness of services can unfortunately be affected by 

the lack of organisation, and effective information storage and 

retrieval systems, within the local registry.” 

A suggestion for tackling this came from a South American lawyer, 

who recommended that service providers actively collaborate “with 

the trademark offices in each country and convince the registrars of 

the importance of creating and developing a trusted database”. 

Into the cloud 

Turning to the future, WTR also sought to explore attitudes to the 

evolution of the trademark services industry. 

In terms of new services that users would like to see, a few 

common themes emerged. Cloud-based services and hosting w ere 

repeatedly mentioned, with one North American private practitioner 

stating: “Cloud-based service is critical to reducing cost and increasing 

reliability and flexibility, as well as to providing more innovative and 

efficient services such as direct access to , and download of, records 

from offices around the world.” Another suggested “cloud-based 

docketing systems for smaller offices”. 

But service providers were divided as to whether their future lies 

in the clouds. At CPA Global, Lacey believes that “cloud-based 

technology will play an increasingly important role within our 

industry”, adding: “Our vision is to bring clients and suppliers closer 

together through cloud-based services to maximise opportunities to 

drive efficiency. For us, cloud-based services are an enh ancement of 

our current offering rather than a replacement.” 

By contrast, at Dennemeyer, cloud-based services are thought to 

lack the customisation options that make for happy users. Nowak 

adds: “Unpublished intellectual property and decisions regarding 

intellectual property – such as whether to maintain or drop it – are 

highly confidential and are best stored in local serv ers, which are 

reasonably protected. Renewal-only services may be less critical 

(except the decision not to renew a mark). Nevertheless, cloud-based 

services have the feeling of being untrustworthy – one never knows 

where one’s data is stored or who could have access to it.” 

At Corsearch, however, Stolfi says: “Our Advantage Screening and 

Edital.com platforms are web based, and all of our products can be 

customised. So yes – cloud computing can reduce internal costs, 

lessening the need for internal servers.” 

Online issues 

Two other areas highlighted for potential development, in terms of 

the services that many users would like to see, are domain name 

searches and social media watching. These can help trademark owners 

in two respects. The first concerns watching services, with “domain 

names, infringing web pages and misuse in soc ial media the main 

areas where these companies can expand in an unrestr icted space”. 

The second relates to a more intangible measurement – trademark 

health. As one European in-house user explained: “I would like a 

service which helps the holder of a trademark to understand its 

Creating visibility 

In terms of interaction with trademark service providers, WTR was keen 

to ascertain how users have sourced potential partners, excluding cold 

call solicitation. Perhaps unsurprisingly – given that this is the one 

marketing activity that service providers seem to embrace across the 

board – conferences and exhibition presence were the most common 

context in which trademark owners had come across different 

companies (73.5%). Online marketing and internet searches/company 

searches accounted for one-third of visibility. Interestingly, print adverts 

and paid-for editorial were next. While this ranked slightly below online 

marketing, fewer trademark services companies currently engage in 

print advertising campaigns, suggesting that those which do are 

benefiting from their activities. 

One marketing tool cited by several users as particularly useful were 

white papers, which allow readers to keep up to date with industry 

developments. This is in marked contrast to the proliferation of webinars 

– which one user summed up as “t oo time-consuming in the middle of 

my work day” – and attendance-driven options, “which are either not in 

my geographic area or again too time consuming”. 

While some channels are underutilised by service providers, 

elsewhere there was a sense of fatigue at being repeatedly pitched to 

sign up for additional services. One in-house counsel complained that 

even a ‘no’ is not always taken as gospel: “Companies should stop trying 

to go around the in-house contact – work with us to make us look better 

internally, and listen to what we consider priorities (based on our 

industry or company). Too many try to sell services to other people in the 

company – services that I've already refused as they are not applicable, 

so when I receive the request back on my desk, I know e xactly what 

they've done.” 

reputation by analysing the Internet, commonly used search engines 

and websites.” 

Feedback from service providers would suggest that options for 

online watching are already available. Hölscher notes that SMD 

Markeur offers “domain name searches and monitoring (identical, 

constituents and even similarity), and we offer to monitor potentially 

infringing trademark use on the Internet”; while CPA Global conducts 

both name searches and social media watching services. Similarly, 

according to Burke, Thomson CompuMark understands “that the 

social media space is an emerging and e volving one”, and has 

incorporated this into its products, as well as continuing to offer 

domain name searches and watches. The message is repeated by CSC, 

which also adds monitoring of social media user names to the list. 

Given this apparent availability of services, it is interesting that 

many users seem unaware of them, suggesting that this is one 

marketing message that has not yet been fully conveyed. 

By contrast, there is only patchy availability of another service that 

users are keen to see – post-search investigations. WTR was variously 

informed of the desire for “local infringement investigation services”, 

those “related to potential and actual infringement, especially in 

relation to Customs” and “regular searches to trace infringement”. One 

Latin American private practitioner stated: “Post-search investigations 

are key to adequate trademark protection and enforceability, but few 

vendors follow up on their reports.” 

In relation to these requests, Burke states: “Thomson CompuMark 

works with Marksmen, the leading provider of in use searches in the 

United States. For Europe, we have an internal multilingual team to 

provide top-notch investigation services.” Wieland confirms that CSC 

offers “three free investigations for records in our full trademark 

research reports – all clients have to do is call us for this service”. 



Trademark watching 

Respondents were asked, on a scale of 1 to 10, how they rate the company they use for trademark watching on the following criteria (only 

the five companies most rated by WTR survey respondents appear below, although an overall industry rating is provided for comparison) 


Quality of data you receive from the provider 7 

Flexibility and usability of search results 6.8 

Linguistic capability 6.6 

Likelihood of recommending this provider 7 

While “degree of global presence” was deemed one of the l ess important 

criteria when choosing a trademark services supplier 

(see table on page 29), when it c omes to searching and watching, local 

expertise was identified as very important by a majority of users (55.6%), 

with over one-third viewing it as important (36.1%). 

In addition, several users specifically highlighted language capability 

as a critical component of successful searching and watching. One 

stated: “Some companies provide incomplete search and watch results 

and do not take linguistic aspects sufficiently into account. This is 

usually the case when there is no human analysis and the results are 

screened automatically.” 

In terms of local presence, Hoelscher agrees with the importance of 

being on the ground. SMD-Markeur utilises a network of trademark 

attorneys to achieve this, while Thomson CompuMark points to its offices 

in seven countries and internal analysts speaking “multiple languages”. 

The latter is also a strength cited by other service providers. 

According to Stolfi, Corsearch is confident that “our multilingual search 

team, coupled with our industry-leading intelligent search abilities, 

allows us to provide the best overall results”; but adds that the 

organisation will “work with local agents whenever we feel that the 

search quality will benefit from local analysis”. 

CPA Global’s La Rooy is more specific on numbers, stating that its 

team is proficient in over 60 languages. He adds: “Journals are sourced 

from every jurisdiction, and reviewed by employees with the appropriate 

language skills. Many of them are nationals of those countries where 

watching is performed, meaning that local equivalents and local market 

knowledge can support the language/visual match.” 

Kimberly Wieland of CSC is quick t o respond to fears of excessive 

automation: “We not only use automatic translation services, but also add 

the human element – we use native speakers to translate rather than just 

rely on automated technology. It gives far better results to our customers. 

At CPA Global, Catherine La Rooy, head of TMDS and domains, notes 

that the company “does not currently offer these services”, but suggests 

that the area may come in for consideration, adding: “We are always 

looking to enhance our service offering in discussions with our clients to 

help them better meet their business needs.” 

A number of additional services or features were suggested by 

users, including: 

• pharmaceutical searches that take into account data from health 

authorities so that “pharmaceuticals can meet both legal and 

regulatory clearance requirements”; 

• watch services for geographical indications, “so they can be 

opposed by affected trademark owners within the non-extendable 

six-month deadline”; 

• landscape searches “to show what the occupied marks look like for 

a particular product or service, to help clients choose marks that 

are not likely to conflict with existing marks”; 

• advice on the latest developments at local trademark offices – in 

particular, how they impact on searching and watching; 

34 

Quality of data you receive from the provider 


CSC 7.2 


Thomson CompuMark (from Thomson Reuters) / Thomson 7 

CompuMark Trademark Watching 

CPA Global/ CPA / TMDS 6.6 

Flexibility and usability of search results 


Thomson CompuMark (from Thomson Reuters) / Thomson 6.9 


CSC 6.5 


CPA Global / CPA / TMDS 6.3 

Linguistic capability 


Thomson CompuMark (from Thomson Reuters) / Thomson 6.7 



CSC 6.3 




SMD Markeur 7 

Thomson CompuMark (from Thomson Reuters) / Thomson 7 



CSC 6.6 

• services offered via smartphone and tablet com puter applications; 

• notices about possible cancellations for non-use – “maybe a link or 

a file inside the intranet of the respective software showing or 

hosting a use book, with evidence of use of all marks around the 

globe”; and 

• a reverse domain name/Whois look-up feature to allow users to 

“find all other domains registered by an infr inger which haven’t 

yet turned up in a watch report”. 

These suggestions would indicate that users are seeking a deeper, 

more personalised experience in terms of data, so that they can 

choose the media and formats that suit them best. Burke, for one, 

predicts that these industry trends will shape Thomson CompuMark’s 

offerings: “We see a number of trends in the trademark industry. First, 

the use of digital tools has been a driving force in the way our 

customers do business, and this dynamic will grow even more rapidly 

in the coming years. Second, access to, and incorporation of, 

appropriate content in trademark search and watch results will 



Figure 1. To what extent is local knowledge and expertise, including 

foreign language proficiency, important in searching and watching? 

36 

Very important 55.6% 

Important 36.1% 

No opinion 6.3% 

Unimportant 1.7% 

Not at all important 0.3% 

Figure 2. What is the most likely scenario for how you see the trademark service provider marketplace evolving? 

continue to evolve. Inclusion of an expanding domain name space and 

content from websites and other contextual sources will augment 

traditional trademark registry data, allowing for a full contextual 

assessment of brands. Third is collaboration. It is critical to provide 

secure and useable environments to support collaboration between 

parties that will enable the workflow of tomorrow. In-house counsel, 

outside counsel, local agents and even business partners need reliable 

and quick access to shared content. Finally, while we have deep 

understanding of common trends within the trademark ind ustry, 

many trademark professionals require a degree of personalisa tion and 

customisation.” 

This move towards personalised delivery of robust information 

presents a distinct challenge to service providers – how to offer a tailored 

product and increased system flexibility while keeping costs down. 

Forecasting the future 

These predictions naturally lead to a consideration of the industry’s 

future as a whole. The final question in the survey centred on how the 

marketplace is likely to evolve (see chart above). While responses were 

mixed, the main focus concerned proactive partnerships between law 

firms and service providers, with respondents stating either that 

vendors and law firms will need to w ork increasingly closely (23%) 

or that the two currently work well together and will continue to 

Vendors and law firms will need to work ever more closely 23% 

Vendors and firms work well together today and will continue to do so 22.6% 

The growth in the number of in-house trademark practices will make firms and 18.9% 

vendors more competitive with one another 

Vendors will increasingly encroach on services offered by law firms 18% 

The vendor marketplace has reached the limit of what it can offer without 9.3% 

providing legal services 

Vendors and firms will offer more and more distinct services and competition 6.3% 

between them will diminish 

Other 1.9% 

do so (22.6%). 

This sentiment is echoed by Corsearch’s Stolfi: “We feel that 

collaboration between legal professionals and their service providers 

will become even more critical, as everyone becomes tasked with 

providing more and more value.” 

The law firm/service provider relationship clearly remains critical, 

and the challenge is for providers to meet demand for more 

sophisticated data and advice without impinging on the services that 

law firms (also clients) offer. 

In this regard, there will be pressure not to offer too m uch in the 

way of trademark-specific advice from some quarters (tellingly, almost 

one-fifth of survey respondents felt that the growth in the number of 

in-house trademark practices will intensify competition between 

firms and vendors). 

This tension was highlighted by several private practitioners. One 

stated: “What is needed from service providers is informa tion on 

which to base advice – anything further would encroach on my 

business.” 

Interestingly, some in-house commentators agreed: “Law firms 

should be the ones handling activities beyond what the providers do 

now. Otherwise, the lawyer-client relationship is not there, and clients 

like us do not get the same confidence, sa tisfaction and value of work.” 

But while service providers may risk treading on law firms’ toes as 


The law firm/service provider relationship clearly remains 

critical, and the challenge is for providers to meet demand for 

more sophisticated data and advice, without impinging on the 

services that law firms - who are also clients - offer 

they expand their offering, most users feel that a balance between the 

two can be maintained. One in-house counsel at a pharmaceutical 

brand predicted: “Vendors will offer increasingly accurate information 

and enlarge their information sources to give increasingly broader and 

reliable information. Legal offices will continue to offer very different 

services to their customers. Each of them – vendors and legal offices 

– will have their own space for working with potential customers.” 

Another private practitioner suggested: “Service providers will 

increasingly try to interact with and understand the requirements of 

legal practitioners without providing paralegal services, which may 

end up being detrimental to the services offered by legal 

professionals. Further, they could try to gather information on the 

performance of client’s trademarks in the marketplace and give 

information on competitors’ trademarks. This would help in letting 

clients know whether their marks are considered to be well known, or 

whether they are at risk of becoming generic or commonly used in the 

trade. After all, survey reports are not the only methods that can be 

used for making sure that clients’ trademarks are known among the 

general public.” 

Looking ahead, several respondents forecast less reliance on 

external partners for bread-and-butter trademark functions. One 

stated: “In many cases (especially change of name recordations and, to 

some extent, renewals), I still have serious doubts that outsourcing 

these services really reduces our administration burden significantly. 

So I would predict a trend of insourc ing some of these services again.” 

However, at Dennemeyer, Nowak notes that cost will play a critical 

role in this decision: “Due to cost sensitivity, the need for standardised 

service is increasing up to total outsourcing of trademark work to onestop-shop 

providers that take care of the whole process – trademark 

pre-filing activities, filings, legal work (eg, oppositions, searches, 

opinions, contracts, licencing), recordals, renewals, archiving, 

docketing, reporting).” 

CSC’s Wieland thinks that “more and more services will be link ed 

together. The brand creation portion of the lifecycle will have to 

involve not only trademark services, but also domain name and soc ial 

media username registrations. Those that pull it all together in a 

simple-to-use, efficient platform will come out on top.” 

Other users envisage reduced need for human interaction, 

identifying a “self-service culture” in which “companies need to continue 

to allow users to readily access data, process it and store it without using 

a middle man if the company so desires. We don’t want to have to 

explain our needs to someone if we can just run searches ourselves”. 

The latter speaks again to personalisation of the customer service 

function. Considering his experience at Corsearch, Stolfi contends: 

“Fewer law firms and corporations are requiring paper watch notices 

and paper search reports, and there will be a time w hen we will be 

paperless. Clients are demanding that their search reports be delivered 

sooner, so turnaround times will also dec rease, and there will be much 

more convergence of data and information from different sources 

around the world, allowing for easier, more cost-effective global 

trademark clearance and enforcement.” 

CPA Global’s Lacey concludes: “The industry will have to develop in 

line with the need to maximise effic iency and reduce costs, while 

maintaining high levels of quality and reliability.” 

Ultimately, it is about customers having access to the data they 

want, when they want it, with added value where they need it. Of 

course, this will create price challenges because system developers 

cannot create a one-size-fits-all platform. But competition should help 

keep costs down – allowing users to become more demanding of their 

strategic partners. WTR 


60 

Over 

For over 60 years brand professionals have chosen Corsearch 

as their trademark solutions provider — and we are only 

improving with age. Corsearch has the largest collection of 

complete trademark databases available online in the world. 

We offer best in-class Screening, Search and Watch tools 

which allow our customers to work more efficiently. 

years experience 

jurisdictions covered 

New Screening Databases: 

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World Trademark Review - Edital

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