Beating Bottlenecks: How Specsavers Enhanced Its Trademark Searches and Watches

As the world’s largest privately-owned optical and audiology retailer, Specsavers operates in a dynamic, fast-paced environment where trademark management and protection is critical. With over 2,000 stores across 10 countries and a well-known global brand, the company’s IP needs are both extensive and evolving.

In this case study, Anthony Douglass, Legal Director at Specsavers, shares his experiences managing these demands — specifically, the transformation of their trademark search and watch processes. Read on to learn how his team has improved turnaround times, increased flexibility, and strengthened brand protection at every stage of the trademark lifecycle.

The challenge

"A couple of years ago, Specsavers decided to insource its IP legal work, hence the need for a trademark search and watch tool like TrademarkNow. Before we used TrademarkNow, we commissioned external counsel to run trademark searches which could easily take up a week before we got the first results.

Now with TrademarkNow, our in-house IP Legal team can perform trademark knock-out searches, identify similar showstoppers, and provide advice within hours. The TrademarkNow platform clearly drives efficiencies and allows our IP Legal team to support the business in even the most challenging of timescales when needed."

Evaluating Options

"The eyewear and audiology industry is a very interesting market and it is really important to understand the business, direction of travel, and activities of our competitors and suppliers. It is a key requirement for an IP legal team to have access to a trademark search and watch tool like TrademarkNow. As our IP budgets are always under review and it is impossible to predict the business “appetite” for trademark searches, value and flexibility were our key considerations when choosing TrademarkNow.

For Specsavers, TrademarkNow products stood out from competitors because of the user-friendly web platform (which is also accessible on mobile devices). Also, trademark results are available within seconds, and we get real-time watch notices, trademark proprietor watching, as well as interesting features like advanced deep dive searches and “follow this application” option (which actively monitors the status of potential infringing or competitor trademarks).

Furthermore, the TrademarkNow platform sends us pre-publication watch notices for potential infringing trademark applications before these trademarks are published, which is very useful to identify potential infringements in an early stage especially in these jurisdictions where trademark applications are examined/ published a couple of months after filing (like for example in Australia and Norway) or jurisdictions with significant delays like Canada (the Canadian Registry is currently approximately 24 months behind in examining new trademark applications)."

Customer experience

"We heard about TrademarkNow during an event of the International Trademark Association (INTA) in 2016. We started a commercial conversation with a TrademarkNow representative and started to use the TrademarkNow platform a couple of months later. The onboarding process went very smoothly. As the TrademarkNow platform is very user friendly and uses a simple but very effective interface, we were up and running within a couple of days. Trademark clearance results from TrademarkNow drove a 40% lift in the IP legal team’s delivery time of new brand name clearance."

Results

"When purchasing TrademarkNow, we hoped it would drive efficiencies and support the business. Given the processing speed of the TrademarkNow platform, we were able to support the business how and when they need it. It all worked out very well!. Whilst TrademarkNow carries a number of similarities with other systems available on the market, we heavily rely on some really interesting features of the platform - among others, the real-time (pre- publication) watch notices, trademark proprietor watching, and “follow this application” - which saves us a lot of time. The TrademarkNow platform clearly drives efficiencies and allows our IP legal team to support the business (in particular our marketing department) in record time when needed.

Trademark clearance results from TrademarkNow drove a 40% lift in the IP legal team’s delivery time of new brand name clearance."

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