The “In-Depth IP Audit Review”

by Ivan Lipshitz, Adv., JMB Davis Ben-David

In my first part article in this series I stressed the need to make the most of your trademark portfolio and realize its true value and economic potential, and how to do this. In my second part article I recommended a suggested modus operandi for an initial “Website IP Audit” for effectively securing your online trademarks and domain names. 

In this article, I detail how a suggested further “In -Depth IP Audit Review” should be undertaken. This will  give you a more detailed, nuanced and in-depth review of your trademark rights and domain names. It will assist in the evaluation of the “health” of your trademark and domain name portfolio at any given point in time and the mitigation of risk and loss of rights. It will also help you to address possible opportunities and challenges, and to point you in the right direction for your long-term IP strategic planning.

The “In- Depth IP Audit Review”

This will involve a thorough assessment of the legal and marketing picture surrounding your business’ entire trademark and domain name portfolio. This more expansive and in-depth audit could involve a review of not only your website and online presence (social media accounts, etc), but everything else, namely, your digital and hard copy product advertising and marketing material, including your printed materials, product packaging inserts and brochures, leaflets, flyers and all other printed materials, hang tags, displays, advertisements, marketing material & promotions. In reviewing such materials, the aim of the exercise is to check that you are using your trademarks properly and referencing them correctly wherever and however they are displayed. Inconsistent trademark use can weaken brand positioning and make it more difficult to defend against infringements. You may also have other marks, logos, taglines or slogans, even non-traditional marks, such as sound marks, shapes, colors, scents, and so on, that customers associate with your goods and services, and which could be registered as trademarks. The IP audit review will pinpoint and identify crucial areas for further consideration and possible trademark registration. 

Some of the areas we would focus on in a detailed review analysis of your trademark and domain name portfolio in such a review would include, but not be limited to, the following: 

1. Confirming ownership and clear title to your trademarks, trade names, and domain names and identifying any errors in your trademark records e.g. incorrect or obsolete company names, inconsistencies, changes of ownership and assignment and license recordals, or changes in address which have not  been updated.
2. Reviewing the name of the entity in which your trademarks are registered. Sometimes trademarks are registered in an owner`s personal name and other times in a company `s  name. Oftentimes, a client sets up multiple different entities to run different parts of a business and is not thoughtful enough about the ownership of its trademarks which are found to be registered in different company`s names. This practice could lead to enforcement problems if the ownership structure of a trademark portfolio is not carefully thought out and not set up properly, making it difficult for the true owner to sue for enforcement in the case of infringement. 

To overcome this issue, it may be prudent to create a single special-purpose vehicle or entity to own your trademarks, domain names and other IP assets. Such vehicle or entity is typically referred to as an “IP holding company”.  If multiple operating entities need to use the same or similar trademarks, the “IP holding company” can license the trademarks to its various operating entities.

3. Identifying strategic or core marks and less strategic marks and identifying which marks must be ring- fenced for greater protection. Typically, this might involve grouping trademarks into ‘core’ and ‘non-core’ categories, where core rights are those that protect a company’s name, key products and markets, and non-core rights are those that concern secondary products and markets or are little used and have less strategic commercial use or value. For instance, a house brand might be a core or strategic mark for your organization.
4. Determining that your registered rights match those used in your business and how best to register your marks for optimum protection, including whether your domain name itself should be registered as a trademark. The various goods and services that a trademark may cover are generally selected from 45 international ‘classes’ as defined by the Nice Classification System. 

Medical devices are a good example of the broad protection accorded by the Nice Classification System when used properly. When it comes to medical devices, most medical devices fall into class 10, but there may be other relevant categories in which it would be advisable to seek protection.  For example, software for operating the device may fall into Class 9, a device used as part of a kit for the medical administration of a drug may fall into class 5, and a device sold as part of a cosmetic kit containing wipes, body gels or creams may fall into class 3.

5. Reviewing the description of goods and/or services in all your registered trademarks to assess whether the mark is being used as described in the specification of goods and services covered by the registered mark.  The specification defines the scope of protection for the trademark and is a crucially important part of a trademark registration.
6. Identifying marks which you may be using in a new way due to changes in technology or marketing strategies, for goods or services not covered by the existing registration. If this is the case, you may need to file another application to obtain adequate protection for your mark as in most jurisdictions a registered trademark cannot be amended once registered.  With the pace of today’s rapidly evolving technologies, you may find that some registered trademarks protect outmoded technologies in its specification and description, and that you are in fact now using technologies that did not even exist when you first filed your trademark applications and that need protection.
7. Identifying marks that are no longer in use and discontinuing their maintenance and enforcement. Marks that have become obsolete and/or irrelevant to your business and are no longer being used should be removed from your trademark portfolio.  So too, if marks are no longer relevant to particular categories of goods and services, they should be cancelled for those categories.  Aside from the substantial cost saving, this avoids trademark “sprawl” and ultimately makes for more effective IP management. By identifying trademarks that no longer have strategic commercial use or value, you can free up resources to strengthen your IP portfolio to reflect your current commercial realities in other spheres.
8. Identifying possible new marks that have not yet been registered, such as logos and straplines that are under development so IP protection can be put in place before products or services go to market and the risk of a new mark infringing on an existing competitive mark is minimised.
9. Registering previously unregistrable marks, for example, descriptive marks that have been so extensively used that they have now acquired distinctiveness through use over time. These are often the most valuable types of trademarks, and it is important to regularly review whether the time is now ripe to attempt to register these “unregistrable” marks and explore options and opportunities for creatively improving your trademark protection.
10. Identifying marks that can be consolidated and/or merged with each other with associated cost savings.
11. Assessing and evaluating IP rights protection mechanisms in new countries and new jurisdictions with more favorable trade agreements to which you may looking to move your production and manufacturing centers as a result of  President Trump`s new trade tariffs. These recent sea- changing developments in global trade policies impacting the global economy present an ideal opportunity to include in your IP audit for 2025 a jurisdiction-specific review and analysis to ensure your trademarks, and domain names are registrable and protectable in such new sought after jurisdictions.
12. Filing trademarks for multiple aspects of your brand, such as word marks and logos, strengthens enforcement options. A diverse portfolio can make all the difference when it comes to enforcing your brand.

From a trademark enforcement perspective, if a word mark is combined with a logo ( or slogan), it is safer to register three trademarks: the word mark itself, the logo ( or slogan)  and the combination of both for optimal protection. Similarly, from a registration point of view, registering a word mark combined with a logo also increases the chances of registration of a word mark which on its own may be deemed to be merely descriptive of the goods and services described.

Annual IP Audit Review & Report

Once an In -Depth IP Audit Review has been conducted it is important that it is reviewed regularly, ideally on an annual basis. An annual review will ensure that your IP strategy will adapt to the changing needs of your business and make sure that you continue to benefit from the time and effort invested in the initial audit. The audit is followed by a report on the audit findings which you can use for planning the future growth of your business.

Key Takeaways

You are advised to schedule regular IP audit ‘health checks’ so that your trademark and domain name portfolio and planning can evolve as your company does and remains relevant to your current needs. Regular IP audits can unlock your trademark portfolio`s and your domain name`s true worth and potential and ensure that it continues to add value to your business, ensure that your legal rights are adequately protected and secured, and that when used properly it can bring long-lasting benefits and growth to your company or enterprise. 

It is highly recommended that you engage an IP specialist to conduct and advise on an IP audit for your trademark portfolio and domain names. We, at JMB Davis Ben-David have the in-depth IP knowledge of the various types of IP and the mechanisms for securing protection to assist you in undertaking and conducting a robust IP audit of your trademark portfolio and domain names. We take the time to understand your business, how you operate and your business plan moving forward so as to obtain optimal results from an IP audit for you. Should you wish to learn more about our conducting an IP audit for your trademark portfolio and domain names, or wish to obtain a fee estimate, please email Ivan Lipshitz at: Ivan.Lipshitz@jmbdavis.com or JMBmail@jmbdavis.com.ease email Ivan Lipshitz at: Ivan.Lipshitz@jmbdavis.com or JMBmail@jmbdavis.com.