McCain Foods

How we help our clients reduce their costs

Background

Canada-based McCain Foods Limited is the world leader in frozen processed potato products; it makes nearly one third of all the frozen French fries produced in the world today.

Their British-based operation, McCain Foods (GB) Limited, has a substantial portfolio of trade marks, built up over many years as new trade marks and products have been developed.

The issue

Given that McCain had a large portfolio of registered trade marks, developed over a number of years, it was inevitable that there was some duplication of marks and that there were a number of registrations no longer in use. The consequence of this was a strong possibility that redundant marks might be renewed unnecessarily.

The solution

McCain and Withers & Rogers agreed that a thorough review of the portfolio should take place to identify redundant registrations and ensure adequate protection was in place for all marks of interest, in all relevant territories. The exercise would also ensure that logos and packaging designs corresponded with the logos and packaging currently in use. The overall objective was to save the company renewal fees and plug any holes in their protection.

The exercise began with the examination of duplicate registrations and subsequent overlaps in protection. Recommendations were made concerning which registrations could be allowed to lapse without any significant loss of rights. Withers & Rogers then identified a number of registrations that could be merged into just one registration. The benefit of this was that future renewal fees were reduced significantly.

To ensure appropriate territorial coverage, we prepared a full list of marks registered in the UK, but not in Ireland. From this, McCain were able to confirm which of those marks required protection in Ireland and we acted upon this accordingly. We also reviewed trade marks appearing on their website and identified a number of marks for which they had no protection and applications for the marks have now been filed.

As part of the annual meeting we reviewed McCain's logo and packaging registrations, to see whether any of them had subsequently been changed. McCain then provided us with copies of the current packaging designs for various products and we were able to identify those registrations which could be allowed to lapse and where new applications were required, in order to ensure that McCain had protection for all their marks, in the form in which they are currently used.

In addition, we provided McCain with a list of registrations which were due for renewal in 2009 and suggested that an internal meeting be held with all relevant parties, to decide which of those marks could be allowed to lapse. This meant that decisions could be made with regard to all of the renewals in one go, rather than on an ad hoc basis.

The outcome

McCain are now only paying fees for marks currently of interest to them, rather than for registrations they do not require. They also have sufficient protection for their marks in the relevant territories. This means they have a much more streamlined trade mark portfolio, which gives them greater protection and which will save them significantly in future renewal fees. McCain were pleased with the idea of dealing with the forthcoming year's renewals in one meeting, rather than dealing with them on an ad hoc basis throughout the year, as this will save administrative time and minimise the possibility of marks no longer of interest being renewed inadvertently.

What the client says

"We're very happy with the way Withers & Rogers dealt with our trade mark portfolio. Not only has it saved us money in renewal costs, but our business is better protected too. Now that the annual review system is set up, we can deal with all the renewals in one go, so nothing gets overlooked or renewed when it shouldn't. A big improvement!"

David Snell, Technical Manager, McCain

"Withers & Rogers has worked with us over a number of years and we value their commercial advice. We work closely together to ensure that the trade mark needs and requirements of our business are met. Of particular importance to us is an efficient and friendly service, which we always receive from Withers & Rogers."

Godfrey Davis, Chairman and Chief Executive, Mulberry Design Limited