IP rights: Thomson Reuters
18 March 2011 | By Joanne Harris
26 March 2008
18 March 2011
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David Rose examines Internet domain name 'hijacking'. David Rose is an assistant solicitor at SJ Berwin & Co.
13 January 1998
In 2008 news and data providers Thomson and Reuters merged in an £8.7bn deal that created the world’s biggest financial media group. The merger has brought up all the usual sorts of legal issues that emerge when two companies combine, but one area where Thomson Reuters has found itself devoting a significant amount of time and energy is brand protection.
“In the past Thomson was a quiet brand,” says Carolyn Blankenship, the company’s associate general counsel for IP. “Reuters was a famous brand, but mostly in Europe and Asia. Since the merger the brand has got a lot more notoriety. It’s on the radar of people looking to do you harm.”
Blankenship points to an increase in lawsuits brought against Thomson Reuters in the Eastern District of Texas. This US district court has developed a reputation as a venue for patent litigation in recent years. Blankenship explains that claims are brought by companies or patent owners that do not sell or make anything, yet because they own a patent can claim infringement. These claimants are often known as ’patent trolls’.
“We’re seeing more of these kinds of suits and I think in part it’s because our brand is so much more visible,” Blankenship explains.
Thomson Reuters has become used to dealing with this litigation. Blankenship says she would advise companies working in the US to accept it as a fact of life, although legislative changes are on the cards that would make the lawsuits less viable. However, she says, “we’re going to see more of these before we see less”.
The merger also caused the company’s IP team a number of headaches associated with internet domain names and trademarks.
“When we first merged we had all kinds of problems with people all over the world trying to register various forms of trademark,” says Blankenship. “We even wound up suing somebody in Virginia to get a domain name back that was important to us.”
To regain control of the domain, Thomson Reuters employed an ’in rem’ proceeding. Originally used as a way of repossessing property, in rem proceedings are now being used to win cases against cyber-squatters. The plaintiff must prove, among other things, that it cannot find the entity that has registered the domain name it is trying to regain control of.
“The judges in Virginia are getting better at these procedures because they’re seeing more of them,” says Blankenship.
But Thomson Reuters’ issues are not restricted to the US. Although Blankenship is based in the US and the centralised IP team is also there, she says she has a network of lawyers worldwide - as well as external counsel - to call on for brand protection matters outside the States.
“One of the most interesting places to me now is China,” says Blankenship. “Ten years ago we wouldn’t even bother trying to file a patent or trademark there.”
This has posed a few problems. She notes that some opportunists have beaten Thomson Reuters to registering trademarks in China.
“You need to show that your brand has achieved a certain amount of fame in China in order to get it back,” says Blankenship.
Since the merger the IP team has been working to identify places where the Thomson Reuters brand might need protecting in the future. This means registering trademarks in countries where the company does not yet have a presence or a product, particularly in developing markets. To identify those opportunities and understand which countries may turn out to be important, the legal function is aligned closely to the business.
However, it is not always necessary to safeguard each and every trademark or domain name in every country. Often, registering the flagship brand name for a product in the US - which remains Thomson Reuters’ biggest market - is sufficient to protect ’sub-brands’ in the case of infringement.
“For the most part our products have the Thomson Reuters flagship name and then they have some other descriptor attached to them,” Blankenship says, adding that these descriptors do not need to be registered.
Blankenship believes it is important for brand protection teams to operate centrally. This was highlighted following the merger, when domain names for various websites came up for renewal. Thomson Reuters discovered that in the past a number of domain names had been registered by individual employees of both legacy companies as the need arose.
“It doesn’t cost very much to register a domain name and it’s not very hard,” Blankenship notes.
But people move on, and Thomson Reuters had to find former employees to track down the owners of particular domains.
“Centralisation makes sense from a strategic standpoint,” Blankenship continues. “You can have a trademark portfolio with thousands and thousands of trademarks. You can save a lot of money by making sure that you have somebody who can be aligned with the business.”
Although the work associated with the Thomson Reuters merger has died down, brand protection will remain an important part of the company’s legal function as the business continues to expand its products and its worldwide reach.