The Small and Medium-Sized Enterprises (SMEs) Division of WIPO ORIENTATION PROGRAM ON INTELLECTUAL...

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The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

ORIENTATION PROGRAM ON INTELLECTUAL PROPERTY FOR MANAGEMENT STUDENTS

OF INDIAN INSTITUTE OF MANAGEMENT (IIPM)

Geneva, Switzerland, 2006

Marketing and Branding Strategies:

The Role of Trademarks and Geographical Indications

Lien Koglin VerbauwhedeConsultant, SMEs Division

World Intellectual Property Organization (WIPO)

Marketing and Branding

Branding matters

“Consumers are starved for time and overwhelmed by the choices available to them.

They want strong brands that simplify their decision making and reduce their risks.”

Kevin Lane Keller, Tuck School of Business

Concept of Branding

• A company image as seen by the customer

• Good branding = getting people to recognize you first

• Having an effective logo with which customers can identify you

• A brand is what differentiates you from your competitors

• Good advertising and how it attracts customers

• A compelling customer experience

Branding is sending a message

Think of it this way:

Marketing is a conversation. The brand name initiates the conversation which will develop multiple concepts and criteria, namely:

Vision, mission, message, service, package, image, differentiation, understanding the customer, advertising, logo, name recognition, customer service, internal training, team work, investment

Purpose of Branding

• Gives a business a significant edge over the competition

• Have the customer view a business as the only solution to their problem

• A strong brand engenders feelings of trust, reliability, loyalty, empathy, responsiveness and recognition in the customer’s mind

The Nike’s case

• Reflects the popularity of a well-known TM• The “Swoosh” is the well known symbol of Nike• Originally Nike’s logo included also the shoemaker’s

name• At the end of the nineties, the Nike’s name disappeared• The swoosh remained as the main identification symbol

of the shoemaker• Today there is no need to include the brand into this logo

since the recognition of a simple swoosh automatically brings our attention to Nike

The “Swoosh”

• Trademarks

• Industrial Designs

• Geographical Indications

3 IP Rights crucial to successful branding

Trademarks

“A sign capable of distinguishing the goods or services produced or provided by one enterprise from

those of other enterprises”

Slovenia: “Sign, capable of distinguishing goods and services in the course of trade”

What is a Trademark?

• A distinctive sign: Identifies certain goods/services

as those produced or provided by a specific person or enterprise

• Exclusive rights: To prevent others from using identical or similar marks on identical or similar goods

• Renewable indefinitely !

• Registration is required in most countries (exception: well-known trademarks)

Any Distinctive Words, Letters, Numerals, Pictures, Shapes, Colors, Logotypes,

Labels or Combinations

Less Traditional Forms

• Single colors

• Three-dimensional signs (shapes of products or packaging)

• Audible signs (sounds)

• Olfactory signs (smells)

Types of Trademarks

• Trade marks: to distinguish goods• Service marks: to distinguish services• Collective marks: to distinguish goods or

services by members of an association (art 23)

• Certification marks• Well-known marks: benefit from stronger

protection (art 22) • Tradename vs Trademark (art 21)

The Value of Trademarks

• A marketing tool

• Source of revenue through licensing

• Crucial component of franchising agreements

• May be useful for obtaining finance

• A valuable business asset

Practical aspects

• Selecting a trademark

• Protecting a trademark through registration

• Using and maintaining a trademark

• Enforcing a trademark

What to avoid when selecting a trademark

• Generic terms: CHAIR to sell chairs

• Descriptive terms: SWEET to sell chocolates

• Deceptive terms: “ORWOOLA” for 100% synthetic material

• Marks contrary to public order/morality• Flags, armorial bearings, official hallmarks, emblems• Negotiating a permission is however possible

The Napapijri’s case

• Italian skiwear and sportswear company

• Napapijri means Artic Polar Circle in Finnish Language. Napapijri is also the name of a small village located on the Polar Circle.

• The Norwegian flag appears on many of the garments as a tribute to the Norwegian explorers that first traveled to Polar Regions by foot and by dog sled over 100 years ago.

• Permission to use the Norwegian flag as a Napapijri logo was happily granted by the King of Norway, Harald the 5th.

Napapijri

Things to remember in selecting a trademark

• Naturally distinctive– Coined or fanciful words: “Kodak”– Arbitrary marks: “Apple” for computers

• Easy to memorize and pronounce• Fits product or image of the business• Not identical or confusingly similar to existing TM• Has a positive connotation in all languages (Pajero)• Suitable for export markets• Corresponding domain name available

Registration steps

• The applicant– Application form, contact details, graphic illustration of

mark, description of goods, fees

• The trademark office– Formal examination

– Substantive examination

– Publication and opposition

– Registration certificate valid for 10 years

– Renewal

Scope of rights

• Exclusive right to use the mark (and allow use)

• Right to prevent others from using – an identical or similar mark for identical or similar

goods or services (pr. of speciality)

– if well known: also for goods or services of a different kind

Keep in mind

• The time it takes to register a TM

• The costs associated with TM protection

• The need for a trademark search

• A trademark agent may be required

• Protecting at home and abroad

• Renewing your registration

Protection at home and abroad• The national route

– Each country where you seek protection

• The regional route

– Countries members of a regional trademark system: African Regional Industrial Property Office; Benelux TM office; OHIM; Organisation Africaine de la Propriété Intellectuelle

• The international route

– The Madrid System administered by WIPO (78 member countries)

Using a trademark

• in marketing and advertising• on business papers• on the internet• as a business asset• affixing the mark to the goods or their packaging• importing or exporting the goods under the mark

IP and Marketing

• Collective marks• Certification marks• GIs

Trademarks

Individual marketing

Joint marketing

Collective Trademarks

What is a collective mark?

• Sign ‘capable of distinguishing the origin or any other common characteristics, including the quality’ of the goods/services of different enterprises which use the sign under the control of the registered owner

• Typically, the owner of collective mark is an association of which those producers are members

• Registered as such in trademarks registry

How does a collective mark work?

• Regulation of use (art 24 Slov Law)

– persons authorized to use – criteria for membership – conditions of use

• e.g. particular features/qualities of the products

– sanctions against misuse

• Authorization to use– membership – application or automatic – comply with the rules

• Control

• Thus, function of collective mark is to INFORM the customers :

– About the origin of the products • e.g. ceramic artisan, member of a specific association in Llublijana

– About a level of quality or accuracy, geographical origin, or other features set by the association

Benefits for SMEs

1.Economies of scale (registration cost, advertising campaign, enforcement, etc.)

2.Reputation acquired on the basis of common origin or other characteristics of the products made by different producers/traders

3.May facilitate cooperation amongst local producers/traders

4. Creation of collective mark hand in hand with development of certain standards and criteria (rules) and common strategy

collective marks can become powerful tool for local development

harmonization of products/services, enhancement of quality

no licenses

Example: “Interflora”

• To buy, order and send flowers at almost anywhere in the world

• > 70.000 florists in 150 countries

• Emblem : Mercurio with flowers in hand

• Slogan: “Say it with flowers"

• Guarantees freshness, flower quality and value of every Interflora relay order

Certification Marks

What is a certification mark?

• Sign indicating that the goods/services have been certified by an independent body in relation to one or more characteristics– composition, manner of manufacture, quality, origin,

material, accuracy, etc.

• Owner is usually an independent enterprise, institution, governmental entity, etc. that is competent to certify the products concerned

How does certification mark work?

• Regulations of use– quality, composition or other characteristics of the

goods/services– control measures– sanctions

• Authorization to use– anyone who meets with the prescribed standards– not confined to membership – generally: licence agreement (fee)– owner not allowed to use

• Control

Benefits for SMEs

• Guarantee for consumers of certain quality

• Benefit from the confidence that consumers place in users of certification mark

• Strengthen reputation

• For example, certify that:

Product is handmade

Certain ecological requirements have been respected in the production procedure

No children were employed in the production process

Products have been produced in specific geographical region

Products are made 100% of recyclable materials

Products are made by indigenous group

Example: “RUGMARK”

• Global non-profit organization working to end child labor and offer educational opportunities for children in India, Nepal and Pakistan

• RUGMARK label is assurance that no illegal child labor was employed in the manufacture of a carpet or rug

“RUGMARK”

• To be certified by RUGMARK, carpet-manufacturers sign legally binding contract to:– Produce carpets without illegal child labor– Register all looms with the RUGMARK Foundation– Allow access to looms for unannounced inspections

• Carpet looms are monitored regularly by RUGMARK

• Each labeled carpet is individually numbered

enables origin to be traced back to the loom on which is was produced

also protects against counterfeit labels

Geographical Indications

What is a GI?

• Sign used on goods that have a specific geographical origin and possess qualities or a reputation that are due to that place of origin

• Source identifiers• Indicators of quality

• Most commonly, consists of the name of the place of origin of the goods

• Country, region, city

• E.g. Champagne (France), Nuoc Mam (Vietnam)

Matterhorn, Switzerland

Eiffel Tower,Paris

Tower Bridge,London

• In some countries : can also be figurative element

• E.g. Eiffel tower, Egyptian pyramid

• E.g. birds, animals associated with a place

• Authorization to use

– Each enterprise located in the area has right to use • For products originating from that area LINK

• Possibly subject to certain quality requirements

How does a GI work?

• Link between product and place

• Place where product is produced (industrial products, crafts)• Place where product is extracted (clay, salt)• Place where product is elaborated (liquor,cheese)

• Unauthorized persons may not use GIs if such use is likely to mislead the public as to the true origin of the product

• for not originating from geographical place

• for not complying with prescribed quality standards

• Sanctions: – Court injunctions preventing unauthorized use

– Payment of damages

– Fines

– Imprisonment

Typical examples:

• Agricultural products that have qualities that derive from their place of production and are influenced by specific local factors, such as climate, type of soil, altitude, etc

– E.g. wine, champagne, cognac, port, sherry, whiskey

– E.g. cheese, yoghurt

– E.g. olive oil, ham, potatoes, honey, rice

Typical examples:

• Also: handicrafts and medium-tech goods

– E.g. ‘Hereke’ (Turkey) for carpets

– E.g. ‘Limoges’ (France) for porcelain

– E.g. ‘Swiss’ for watches

– E.g. ‘Arita’ (Japan) for ceramics

- Considered to be one of the finest ceramics in Mexico

- Handmade and painted by hand

- Historical linked with Arabic culture - Typical are the geometric designs in

blue color painted on a white background

- The design and colours of the artwork are created following traditional rules and know-how

Example: “Talavera de Puebla”

• National

• Regional

• International

How is a GI protected?

Protection on national level

– Specific title of protection• Registration with IP office (Russia)• Decree (France)• Special laws for the protection of GIs (India)

– Certification marks or collective marks • Cert: e.g. in the U.S.A.: Darjeeling, Swiss, Stilton• Coll: e.g. Japan; agricultural label in France

– Passing-off, Unfair Competition, Consumer Protection laws

• If reputation + misleading

• Pass off: e.g. Scotch whisky – Peter Scot in India

• Cons prot: e.g. ‘made in Japan’; Egyptian cotton

Protection on international level

– No legally binding international register for all GIs

– Bilateral agreements • e.g. EU-Bulgaria for wine names

– International treaties

– International treaties • TRIPS:

– minimum standard of protection for WTO members

– if misleading or act of unfair competition

– enhanced level of protection for wines and spirits

– no protection if GI is generic term for the goods in the member state

• Lisbon:

– international registration system

– member countries must prohibit imitations, including terms like “type” or “kind”

– cannot become generic, as long as protected country of origin

• GIs shift the focus of production to quality increased production local job creation

• Reward producers with higher income in return for efforts to improve quality

• Provide consumers with high-quality products whose origin and mode of production is guaranteed

Benefits for SMEs

– Inconsistent protection• Absence of GI system in many countries

• Civil law

– Registration

– Only similar goods

• Common law

– Repution enough (e.g. Champagne in India)

– Also dissimilar products

• Additional protection for wines and spirits

– GIs may become generic terms (e.g. Chablis in America)

Disadvantages

Thank You

e-mail: lien.verbauwhede@wipo.int

http://www.wipo.int/sme/

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO ORIENTATION PROGRAM ON INTELLECTUAL...

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