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MAY 2008

How Unilever outsourced 160,000 marks

On January 1 last year Unilever outsourced its trade mark prosecution work. Almost 18 months on, Katrina Burchell, the company's general trade mark counsel, told Emma Barraclough about the experience

One-minute read
January 1 2007 saw the official launch of a contract between Unilever and Baker & McKenzie that saw the law firm take over the day-to-day administration of the world’s largest trade mark portfolio. The move reignited the debate over whether trade mark prosecution work is best handled in-house or outsourced, and whether law firms should offer a one-stop shop for prosecution and contentious work. Almost 18 months on, Katrina Burchell, Unilever’s general trade mark counsel and the architect of the outsourcing plan, explains why the company took the decision, her experiences so far, and whether she thinks that other businesses should follow Unilever’s lead.

When Unilever, the world's largest trade mark owner, announced in late 2006 that it had finalized a deal that would see it outsource the operation and administration of its 160,000-mark trade mark portfolio, brand owners and private practitioners around the world sat up and watched. Was the move just a short-term flirtation with outsourcing, the logical follow on from banks and technology companies rushing to set up back offices and call centres in Bangalore and Manila – only for many of them to rethink their decisions later following customer feedback? Or did it signal a longer-term trend that would force law firms and trade mark attorney firms to overhaul their business models and choose between investing in the kind of extensive and expensive IT systems that helped Baker & McKenzie win the contract to manage Unilever's trade marks, or downgrading their prosecution departments altogether and focusing on more lucrative – but less predictable – litigation or corporate support work.



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