LAUNCHING NEW PRODUCTS IN THE MARKET Unleashing the Power of Branding through

Trademarks

(updated 2006)

Caroline Schwab - Program officerSmall and Medium-Sized Enterprises Division

WIPO - World Intellectual Property Organization

Branding and trademarks are keys

to success in business and in the

global market

YESTERDAY’S OPERATION:

- Technology Brands

- E-mails Campaigns

- PR in place of advertising

- Viral Marketing

TODAY:

- Lifestyle Brand

- Authenticity Marketing

- Product Placement

- Viral Marketing

- Brand Culture

What is Branding• Branding -- is the process by which the

name or the identify of an owner, a company/enterprise or organization, is communicated.

• Branding allows a company to differentiate its products and services from the competition by creating a bond with its customers. It aims to create customer loyalty.

• This way, a company takes a position in the marketplace.

What is Branding• A way by which companies launch and sell

goods & services.• A brand name is sometimes made of a part

or the totality of a trademark name• It communicates the essence of a products

or its line, including why it is great and how it is better than all competing products.

• It reflects in general a prestigious (aesthetic) image in order to attract more consumers.

SUCCESSFUL BRANDINGAttracts / catches the consumers

• Developing a brand is part of every strategic business plan

• Target what customers care about: articulate precise values and qualities that are relevant and of direct interest

• Emphasize features that are both important to consumer and quite differentiated from competitors

• Communicate constant innovating brand image at all levels of operation

THE PINK PANTHER IS A WORLDWIDE PROTECTED CHARACTER USED AS A MARK, AS A

COPYRIGHT & AS AN INDUSTRIAL DESIGN.

TRADEMARKS

ARE FOR EVER

10 Points about TRADEMARKS

10 POINTS ABOUT TRADEMARKS1. Product or service Image (Identity)

2. Distinguish goods or services among others3. Play a pivotal role in the branding/marketing Strategy

4. Can be extended to any country5. Defines a certain image - builds a reputation

6. Is a marketing tool - enabling licensing & franchising7. Is a valuable IP business asset

8. Encourage companies to invest, maintain and improve product quality

9. Once protected, are useful for obtaining financing10. Can be put in the stock exchange

Before launching a trademark - key to success is CLEARANCE

What is a Trademark?

• A BRAND NAME - A KIND OF VISIT CARD THAT PROMOTES THE IMAGE OF A COMPANY AND ITS RANGE OF GOODS & SERVICES.

• “A sign distinguishing goods or services produced or sold by one enterprise (from those of other enterprises)”.

A TRADEMARK IS MADE OF :

Any Distinctive Words, Letters, Numerals,

Pictures, Shapes, Colors, Logotypes, Labels

• Examples:

Less traditional forms

• Single colors (Louis Vuitton)

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

• Audible signs (sounds)

• Olfactory signs (perfume)

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• Certification marks

• Well-known marks: benefit from stronger protection • Tradename (Brand name)

The function of a Trademark

• ALLOWS COMPANIES TO MARK A TERRITORY, EXPRESSING SPECIFIC FUNCTIONS AMONG SIMILAR PRODUCTS IN THE MARKET.

• ENSURES THAT CONSUMERS CAN IDENTIFY A LINE OF PRODUCTS.

• ENSURES EXTENSION OF THE MARK THROUGH LICENSING OR FRANCHISING PROCESS.

THE VALUE OF A TRADEMARK?

• A MARKETING TOOL

• SOURCE OF REVENUE THROUGH LICENSING

• CRUCIAL COMPONENT OF FRANCHISING AGREEMENTS

• USEFUL FOR OBTAINING BANKS OR THIRD PART FINANCE

• A VALUABLE BUSINESS ASSET

The Value of Trademarks

• Global Brand Scoreboard

• 1. COCA-COLA 67.52$ billion• 2. MICROSOFT 59.95$ billion• 3. IBM 53.37$ billion• 4. GE 46.99$ billion• 5. INTEL 35.58$ billion• (German survey January 17, 2006)

Trademark protection > Registration =

• EXCLUSIVE RIGHTS PREVENT OTHERS FROM MARKETING PRODUCTS UNDER SAME OR CONFUSINGLY SIMILAR MARK

• SECURES INVESTMENT IN MARKETING EFFORT

• PROMOTES CUSTOMER LOYALTY/ REPUTATION / IMAGE OF COMPANY

• PROVIDES COVERAGE IN RELEVANT MARKETS WHERE BUSINESS OPERATES

• REGISTERED MARKS FOR LICENSE OR BASIS FRANCHISING AGREEMENTS

PRACTICAL ASPECTS

• Creating/selecting a trademark after CLEARANCE - searching worldwide that there is not a similar one yet legally protected

• Avoid IP offices’ refusals or oppositions • Protecting a trademark through national, regional

and WIPO registration system (Madrid & Protocol)

• Using and maintaining a trademark (paying fees, following notification of refusals, extending territory)

• Enforcing a trademark by Innovating (new products)

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 and MORALITY

• AVOID USING FLAGS, ARMORIAL BEARINGS, OFFICIAL HALLMARKS, EMBLEMS WITHOUT LEGAL AUTHORIZATION

What to Remember when selecting Trademark?

• Inherently distinctive• Coined or fanciful words: “Kodak”

– Arbitrary marks: “apple” for computers– Suggestive marks: SUNNY for heaters

• Easy to memorize and pronounce• Fits product or image of the business• Has no legal restrictions

– Reasons for rejection– TM search>not identical or confusingly similar to existing

TM• Has a positive connotation• Suitable for export markets• Corresponding domain name available

Protecting a TM through registration

• The applicant can file a request through his national office • Right after filing through the IP Office, a trademark can be filed at

WIPO (Madrid & Protocol) - saving time and money– WIPO offers free assistance, information & guidelines– Filing application form, contact details, graphic illustration of

mark, description of goods, fees– Registration certificate valid for 10 years– Renewal & Publication (CD-Rooms /Gazette)

• The IP national office is the only authority in charge of :– Formal examination– Substantive examination– Publication and opposition

The Madrid system for the international registration of marks (the Madrid system) established in 1891

functions under the Madrid Agreement (1891), and the Madrid Protocol (1989) are administered by the

International Bureau of WIPO located in Geneva, Switzerland.

This system for an international protection of Trademarks and Brands is adopted by more than

70 member states of WIPO, members of the « MADRID UNION »

Madrid System for the International Registration of Marks

The Madrid and the Protocol system offers the possibility to record a trademark in 78 countries at once.

However, owners has to go through their own national office to present their request to WIPO

WIPO HAS MADE POSSIBLE A FREE SEARCH ON-LINE OF “ROMARIN” –

INFORMATION ON TRADEMARKS RECORDED AT WIPO.

http://www.wipo.int/madrid/en/services/MANY REGISTRIES FOR SEARCH ARE AVAILABLE IN THE PRIVATE SECTOR OR VIA THE IP OFFICES, COUNTRY BY

COUNTRY.

Madrid System for the International Registration of Marks

Protecting a TM through registration

• It is critical to register your trademark in all classes in which you use or intend to use your trademark.

• The most widely used classification system (Nice has 34 classes for goods and 11 for services.

• Some TM offices such as in US and Canada require the proof that the TM is used within a year.

•

Protecting a TM through registration

• A substantive examination may be required if there is a conflict with an existing Mark on the register.

• Some countries publish the TM in a journal allowing 3rd parties to oppose during a given period.

• Once it is decided that there is no grounds for refusal, a certificate is issued which is valid for 10 years.

• Registration can be renewed indefinitely but may be cancelled if TM is not actively used for a certain period stated in the TM law.

•

SCOPE OF RIGHTS

• THE EXCLUSIVE RIGHT TO USE THE MARK

• THE RIGHT TO PREVENT OTHERS FROM USING AN IDENTICAL OR SIMILAR MARK FOR IDENTICAL OR SIMILAR GOODS OR SERVICES

• THE RIGHT TO PREVENT OTHERS FORM USING AN IDENTICAL OR SIMILAR MARK FOR DISSIMILAR GOODS OR SERVICES

KEEP IN MIND

• THE TIME IT TAKES TO REGISTER A TM

• THE COSTS ASSOCIATED WITH TM PROTECTION

• THE NEED FOR A TRADEMARK SEARCH - FREE AT WIPO

• A TRADEMARK AGENT MAY BE REQUIRED

• PROTECTING AT HOME AND ABROAD

• RENEWING YOUR REGISTRATION & PAYING FEES

PROTECTING AT HOME AND ABROAD

• THE NATIONAL ROUTE– Each country where you seek protection

• THE REGIONAL ROUTE (for some countries only)– Countries members of a regional trademark system:

African Regional Industrial Property Office; ASEAN IPO; Benelux TM office; Office for Harmonization of the Internal Market of the EU; Organisation Africaine de la Propriété Intellectuelle

• THE INTERNATIONAL ROUTE • UK JOINED THE MADRID PROTOCOLE IN DECEMBER

2005 - ISRAEL MAY JOIN VERY SOON – The Protocol & Madrid system administered by WIPO – 78 member countries

USING A TRADEMARK

• ACTIVELY USING A TM

• USING/MAINTAINING A TM IN MARKETING AND ADVERTISING

• USING THE MARK ON THE INTERNET

• USING THE MARK AS A BUSINESS ASSET

ACTIVELY USING A TRADEMARK

• OFFERING THE GOODS OR SERVICES

• AFFIXING THE MARK TO THE GOODS OR THEIR PACKAGING

• IMPORTING OR EXPORTING THE GOODS UNDER THE MARK

• USING IT ON BUSINESS PAPERS OR IN ADVERTISING

USING A TRADEMARK IN ADVERTISING

• USE EXACTLY AS REGISTERED

• Protect TM from becoming generic– Set apart from surrounding text– Specify font, size, placement and colors– Use as an adjective not as noun or verb– Not plural, possessive or abbreviated form– Use a trademark notice in advertising and labeling ®

• MONITOR AUTHORIZED USERS OF THE MARK• REVIEW PORTFOLIO OF TRADEMARKS• AN EVOLVING TRADEMARK

USING A TM ON THE INTERNET

• USE OF TM ON INTERNET MAY RAISE CONTROVERSIAL LEGAL PROBLEMS

• CONFLICT BETWEEN TRADEMARKS AND DOMAIN NAMES (INTERNET ADDRESSES) - CYBER SQUATTING

• WIPO PROCEDURE FOR DOMAIN NAME DISPUTE (HTTP://ARBITER.WIPO.INT.DOMAINS)

USING A TRADEMARK AS A BUSINESS ASSET

• LICENSING: OWNER RETAINS OWNERSHIP AND AGREES TO THE USE OF THE TM BY OTHER COMPANY IN EXCHANGE FOR ROYALTIES > LICENSING AGREEMENT (BUSINESS EXPANSION/DIVERSIFICATION)

• FRANCHISING: LICENSING OF A TM CENTRAL TO FRANCHISING AGREEMENT.THE FRANCHISER ALLOWS FRANCHISEE TO USE HIS WAY OF DOING BUSINESS (TM, KNOW-HOW, CUSTOMER SERVICE, S/W, SHOP DECORATION. ETC)

• SELLING/ASSIGNING TM TO ANOTHER COMPANY (MERGER & ACQUISITIONS/RAISING OF CASH)

ENFORCING TRADEMARKS

• RESPONSIBILITY OF TM OWNER TO IDENTIFY INFRINGEMENT AND DECIDE ON MEASURES

• “ CEASE AND DESIST LETTER” TO ALLEGED INFRINGER

• WIPO ENFORCEMENT PROGRAMS -

• COOPERATION WITH CUSTOMS AUTHORITIES TO PREVENT COUNTERFEIT TRADEMARK GOODS

• ARBITRATION AND MEDIATION (PRESERVE BUSINESS RELATIONS)

SMES GUIDE FOR TRADEMARKS

THANK YOU FOR YOUR ATTENTION

(end of part I)www.wipo.int/sme/en

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