Client Background:
DSM-Firmenich, a dynamic and innovative entity formed through the merger of two industry- leading businesses, sought HSS IPM’s expertise in intellectual property consulting to conduct international clearance searches in relation to proposed Masterbrand elements. The client had created a fresh new brand identity for the merged entity capturing the spirit of bringing two iconic organizations together in a merger of equals. As a result, the new brand also required a comprehensive set of trademark specifications to cover the extensive range of goods and services to deliver on dsm-firmenich’s purpose to bring progress to life, together with customers and partners, to achieve positive change and make a difference in the nutrition and wellbeing sectors globally.

Objective:
The primary objective was to ensure that the new trademark was legally and commercially viable across key jurisdictions. Additionally, the client needed a robust set of specifications that would reflect the diverse nature of the goods and services offered by the merged entity, which operated globally.

Phase One: International Clearance Search
Our first task was to conduct an exhaustive international clearance search to identify potential conflicts and risks associated with the adoption of the new trademark. The search encompassed a mix of technical and commercial analysis using paid search platforms and local trademark office databases. In specific cases, we also performed Internet searches to help evaluate commercial risk, as well as relevant copyright and image checks. The scope covered close to 50 jurisdictions across North America, Oceania, APAC, EAME and LATAM regions, each with its unique legal landscape and regulations concerning trademarks. To ensure accuracy and depth in our search, we collaborated with local experts with an intimate understanding of regional trademark laws and practices. Additionally, a search of domain names covering key gTLDs and ccTLDs was undertaken, to check for potential obstacles on-line.

The coordination and collaboration with local experts were critical to overcoming language and jurisdictional barriers.This phase involved:
1. In-Depth Research: Our team of experts researched and analyzed existing trademarks generated through the search tools, providing insights and advice about their potential impact on the new brand.
2. Local Expert Collaboration: We engaged with intellectual property professionals to gain insights into local nuances, potential challenges, and best practices.
3. Risk Assessment: A comprehensive risk assessment was conducted – including color coded results presentation for fast interpretation – to provide the client with a clear understanding of the potential obstacles identified through the search and legal implications associated with the chosen trademark.       4. Recommendations: Based on the findings, we provided strategic recommendations to navigate potential conflicts and mitigate risks, ensuring a strong foundation for the new trademark.

Phase Two: Specification Development
After a risk-based clearance of the chosen trademark, the focus shifted to developing a comprehensive set of specifications. Given the diverse range of goods and services offered by the merged entity on a global scale, this phase involved:
1. Research & Stakeholder Consultations: HSS IPM undertook an in-depth review of information from both companies to augment the original specifications list provided by the client. There were extensive consultations with the client – on an almost daily basis given project urgency – to rapidly understand the nuances of their products and services, ensuring that the specifications were comprehensive and aligned with business goals incorporating both B2B and B2C focus.
2. Multi-Language Documentation: Specifications were meticulously crafted in two languages to cater to the global reach of the merged entity, demonstrating sensitivity to linguistic and cultural variations.
3. Legal Compliance: Our legal experts crafted specifications harmonized to the relevant EU and US trademark practices to minimize the risk of rejection in these key jurisdictions during the application process.
4. Futureproofing: Anticipating potential expansions in the range of goods and services, the specifications were designed to be adaptable to future business developments.

Outcome:
HSS IPM provided dsm-firmenich with a strong foundation for the IP protection of their new Masterbrand. The international clearance search ensured that the chosen trademark had robust potential, while the comprehensive specifications offered a flexible framework for the brand’s growth. The client successfully launched their new brand backed by a trademark strategy that accounted for both current and future business endeavors.
“Engaging HSS IPM was a strategic decision that contributed to the success of our merger preparations. Timings were extremely tight – so we needed a provider who could offer round- the-clock services from an experienced international team with flexibility to adapt as the project and business needs evolved. Throughout the project, HSS IPM were committed to delivering solutions tailored to our global ambitions. In April 2023, dsm-firmenich launched our new brand with confidence, knowing that our intellectual property strategy was not only legally sound but also positioned for future growth.” Jayne McClelland, IP Business Partner, Intellectual Property Department