Transcript WIPO National Seminar on Importance of Intellectual Property Rights for the Indian Handicrafts Sector April 5-7, 2005 The Small and Medium-Sized Enterprises (SMEs) Division of.

WIPO National Seminar
on Importance of Intellectual Property
Rights
for the Indian Handicrafts Sector
April 5-7, 2005
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
Marketing
BrandinginStrategies
Branding
and and
Trademarks
Marketing
Handicrafts; Case Studies
by
Guriqbal Singh Jaiya
Director, SMEs Division
World Intellectual Property Organization (WIPO)
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
Does a name really matter?
• In 1969 while speaking at a small scientific conference, Sir Roger
Penrose, a Cambridge physicist announced his discovery of what
he called a "gravitationally totally collapsed object." The world
yawned.
• Months later, he changed his description to a "Black Hole" and the
news of his discovery raced around the world. Today, the term
Black Hole is a part of the world's working vocabulary.
• We cannot understand, or maybe we do not care about a collapsed
object. But a Black Hole is something very different. It is
provocative, intriguing, exciting and conceptual. Most important, it
is believable. (quoted from Lexicon Branding, Inc.)
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
Concept of Branding
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Getting people to recognize your name
A brand is a company image as seen by the customer
Good branding means getting people to recognize you first
A brand means you have an effective logo with which
customers can identify
• A brand is what differentiates you from your competitors
• Good advertising and how it attracts customers
• A compelling customer experience
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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,
logoname recognition, customer service, internal
training, team work, investment
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
Purpose of Branding
• Gives a business/enterprise a significant edge over
the competition
• Have the customer view a business/enterprise 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.
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Plan to Brand
• Developing a brand is a milestone in the preparation
of every strategic business plan
• Trademarks, Industrial Designs and Geographical
Indications - Three Intellectual Property Rights that
are crucial to successful branding
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
Trademarks
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What is a
Trademark/Brandname?
“A sign capable of distinguishing the goods or services
produced or provided by one enterprise from those of
other enterprises”
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Any Distinctive Words, Letters,
Numerals, Pictures, Shapes, Colors,
Logotypes, Labels or Combinations
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Less/Non Traditional Forms
• Single colors
• Three-dimensional signs (shapes of products or
packaging)
• Audible signs (sounds)
• Olfactory signs (smells)
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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 vs Trademark
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The Functions of Trademarks
• Allows companies to differentiate their
products
• Ensures consumers can distinguish between
products and ultimately develop brand
loyalty/Trust
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The Value of Trademarks
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A marketing tool
Source of revenue through licensing
Crucial component of franchising agreements
May be useful for obtaining finance
• A valuable business asset
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Value of trademarks in 2004 (*)
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1 Coca Cola
2 Microsoft
3 IBM
4 GE
5 Intel
6 Disney
7 McDonald’s
8 Nokia
67,394
61,372
53,791
44,111
33,499
27,113
25,001
24,041
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
* ($ Millions)
Protecting through 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 may be licensed or basis franchising
agreements
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
Practical aspects
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Selecting a trademark
Protecting a trademark through registration
Using and maintaining a trademark
Enforcing a trademark
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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 Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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.
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Napapijri
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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
• Suitable for export markets
• Corresponding domain name available
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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
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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;
Office for Harmonization of the Internal Market of the EU;
Organisation Africaine de la Propriété Intellectuelle
• The international route
– The Madrid System administered by WIPO (77 member
countries)
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Using a trademark
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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
Offering the goods or services
Affixing the mark to the goods or their packaging
Importing or exporting the goods under the mark
Use on business papers or in advertising
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
TM in marketing and advertising
• Use exactly as registered
• Protect TM from becoming generic
– Set apart from surrounding text
– Specify font, size, placement and colors
– Use as a name 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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
Using TM on the Internet
• Use of TM on internet may raise controversial legal
problems
• Conflict between trademarks and domain names
(internet addresses) - cybersquatting
• WIPO procedure for domain name dispute
(http://arbiter.wipo.int/domains/index.html)
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
Using the TM 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, etc.)
• Selling/assigning TM to another company (merger &
acquisitions/raising of cash)
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Enforcing trademarks
• Responsibility on TM owner to identify infringement and
decide on measures
• “ Cease and desist letter” to alleged infringer
• Search and seize order
• Cooperation with customs authorities to prevent counterfeit
trademark goods
• Arbitration and mediation (preserve business relations)
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IP for Business Series
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Use of IPRs in Advertizing
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Nature of IPRs
• Designed to protect the exclusive right of
exploitation for limited periods of time
• This is probably encouraging creativity while
creativity is stimulated by a reasonable and fair use
of other’s ideas
– “I have never made the slightest effort to compose
anything original” (Wolfang Amadeus Mozart)
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
Originality
• Applying legal concepts is essential for advertisement
professionals
• In the case of trademarks, words, symbols and logos
must clearly identify a brand, good or service
• To do so, they have to show sufficient artistic originality
• A too simple presentation of the creation would
probably cause the rejection of IP protection by the IP
Office
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
Slogans and headlines
• The word “Slogan” comes from the Gaelic term for “battle
cry”
• Many slogans begin as headlines and become familiar, such
as “Just do it” (Nike) or “We Try Harder” (Avis)
• Continuos use of a slogan can create trademark rights
• Advertising text is copyrightable and may be classified as
literary work, provided it has a creative and original
component
• A long text increases the possibility of copyright protection
while a short text requires an additional creativity and
originality The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
Advertising and trademarks
• Essential to allow consumers to identify the
product/service
• Trademarks law protect the mark owner as well as
the buying public, avoiding possible confusion
• Importance of performing a trademark search before
investing in a slogan or advertisement campaign
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Advertising and copyright
• Ownership generally follows authorship
• To be copyrightable, the work must be original
• In addition, it must fall into one of the following
work categories: literary, musical, dramatic,
pantomimes and choreographic, pictorial, graphic
and sculptural works, audio-visual, sound recording,
three-dimensional architectural works.
• It must be fixed in a tangible support
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
The Nike’s case
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This 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
bring our attention to Nike
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
The “Swoosh”
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Comparative Advertisement (CA)
• Advertising that claims superiority to competitors
• In many legislations, the owner of a well-known
trademark cannot prevent a competitor to fairly refer
to the owner’s mark in the context of comparative
advertisement
• Few rules in CA: be fair, honest, accurate and
especially do not mislead
• Opinions should never be expressed as facts
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
Thank you
e-mail: [email protected]
http://www.wipo.int/sme/
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO