Is it worth managing your trademark portfolio in-house — or would an external partner specialising in brand rights bring added value? Our Managing Partner Jani Kaulo explains when own management is enough and when you should consider an external partner.
Many companies handle their trademark matters themselves — and often for good reason. When there are only a few registrations, the market is clearly defined, and the organisation has built up experience with applications and renewals, self-management can work well for a long time.
The challenge rarely appears all at once. It grows gradually: as the number of trademarks increases, new brands are launched at a steady pace, the market expands into new countries, or infringement situations start arising more frequently than before. At that point, the central question is no longer "do we know how to file a trademark application", but "are we managing the entire portfolio?"
When self-management works well
Handling trademark matters in-house is often a perfectly adequate solution when:
- There are only a few registrations
- The market is clearly defined
- New brands are created infrequently
- There is a clear person responsible within the organisation, along with the necessary expertise
- Renewals and official communications are well managed
If all of these apply, an external partner does not yet bring significant added value. However, it is worth reassessing the situation whenever any of these factors change.
When risk starts to grow
Risk does not announce itself in advance. It grows quietly in the background when:
- There are already dozens of trademarks
- Multiple people are involved in portfolio management, and no one has a complete overview
- New product brands are being launched continuously
- The company operates or plans to operate in multiple countries
- Monitoring of use and competitors — tracking whether anyone is using the marks without authorisation — is not systematic
- Preliminary trademark searches are only conducted using basic databases
- The portfolio is not regularly reviewed to determine which registrations should be renewed and which could be let go
I see this pattern repeat itself: a company has managed its trademarks well in the early stages, but as growth continues, trademark management falls by the wayside amid other priorities. No one is doing anything wrong — it's just that no one has a view of the whole picture anymore.
Registration is only the first step
Trademark management does not end once an application has been filed. After that, there is plenty to take care of: proper use of the mark, timely renewals, portfolio updating, preliminary searches before introducing new brand names, potential situations where a competitor opposes a trademark registration, infringement cases, online monitoring, and marketplace monitoring. None of these are one-off tasks — they are an ongoing process that requires an owner and dedicated time.
A practical example: when someone else uses your trademark online
A company may have a well-registered trademark that has been in place for years. Yet at some point, another party begins using the same or a very similar name on their website. In such situations, a swift and practical response is often more effective than a lengthy dispute. A clear initial contact and a demand to cease use is sufficient to resolve the matter in many cases — but only if the situation is noticed in time. Without monitoring, it goes unnoticed.
Checklist: is your trademark portfolio under control?
- Do you know with certainty which marks you have registered?
- Is there a clearly designated person responsible for renewals?
- Do you conduct a trademark search for new brand names before launch?
- Do you monitor whether anyone is using your trademarks without authorisation?
- Do you know in which countries it is worth securing exclusive rights?
- Do you regularly assess which registrations are worth keeping alive?
If the answer to several points is uncertain, it is not yet a crisis — but it is a sign that the management of the trademark portfolio needs a systematic approach and you could benefit from an external resource.
Summary
Self-management can be a fully functional solution, and for many companies it will remain so for a long time. But the more brands, product names, and registrations accumulate, the more important it becomes for someone to review the overall picture on a regular basis — not just individual applications.
If even one item on the checklist raised uncertainty, a light trademark portfolio audit is a good and low-threshold first step.
Would you like to discuss your situation with a specialist in brand rights?