Transcript Marketing Software Products: The Importance of Trademarks and Industrial Designs - Case Studies.

Marketing Software Products: The Importance of
Trademarks and Industrial Designs - Case Studies
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Beyond Getting Noticed:
The Role of Trademark and
Industrial Designs in
Developing a
Branding Strategy
Guriqbal Singh Jaiya
Director
Small and Medium-sized Enterprises Division
World Intellectual Property Organization
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This Presentation
1.
What is Branding?
2.
The Branding and Trademark Symbiotic
Relationship
3.
The $ Value of a Brand, …. of a Trademark
4.
What is a Trademark?
5.
DO’s and Don’ts to Preserve Distinctiveness and
Value of a Trademark
6.
Most Common Mistakes by Exporters
7.
What is an Industrial Design?
8.
The Value of a Creative Design
9.
Practical Aspects of Industrial Designs
10.
Industrial Design Issues Affecting Various Types of
Business Decisions
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What is Branding?
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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.)
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What is a Brand?
In marketing terms it is:
The intangible, but real, value of words,
graphics or symbols that are associated
with the products or services offered by a
business.
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A brand represents the holistic sum
of all information about
a product or group of products.
It is a symbolic construct which typically consists of
— a name;
— identifying mark;
— logo;
— visual images or symbols; or
— mental concepts.
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Simply, a brand is to ...
— distinguish a product or service.
 It is useful for the marketer to think of this as a set
of aligned expectations in the mind of its
stakeholders ...
 from its consumers,
 to its distribution channels,
 to the people and companies who supply
the products and services.
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What is the Purpose of
Branding for your Business?
1. Gives your business a significant edge over the
competition;
2. Makes the customer view your business as the only
solution to their need or problem;
3. A strong brand will engender feelings of trust, reliability,
loyalty and recognition in the customer’s mind;
4. Through its brand image, a business will attract and retain
customer loyalty for its goods and services and increase
the value of its business.
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What to do for a Successful
Branding Strategy ...
1. Develop a brand that is part and parcel of your business plan;
2. Target what customers care about: articulate precise values
and qualities that are relevant and of direct interest;
3. Emphasize features that are both important to consumer and
quite differentiated from competitors;
4. Sell the brand outside and inside: Motivate employees to
identify with brand;
5. Keep brand flexible;
6. Communicate the brand image at all levels of operation;
7. Use Intellectual Property Rights (IPRs), tools for branding, such as
trademarks and industrial designs.
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Source: Association of Professional Design Firms, APDF, http://www.apdf.org/Public/Index.asp?Page_ID=74
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The Branding and Trademark
Symbiotic Relationship
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What is the Relationship between a
Brand and a Trademark?
… The term ‘brand name’ is often used interchangeably
with “brand”, BUT …
… it is more correctly used to specifically denote written or
spoken linguistic elements of a brand.
…. In this context a “brand name” constitutes a type of
trademark, if the brand name exclusively identifies the
brand owner as the commercial source of products or
services.
…. A brand owner may seek to protect proprietary
rights in relation to a brand name through trademark
registration.
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A Brand — A Trademark
— Trademark: Legal concept
— Brand: Marketing concept
1. Registration of a trademark will add value to
your business as it protects its other inherent
assets;
2. Brand profile and positioning may vary over
time, but trademark protection will remain the
same.
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So …
What is the Value of Branding ...
….. and the Importance of
Trademark Protection ….?
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The Importance of Brand Equity and
Trademark Protection
— Brand Equity measures the total value of
the brand to the brand owner, and reflects
the extent of brand franchise.
… Brand Equity is built on the foundation of a
protected Trademark,
and this in turn becomes one of your business’
most valuable assets.
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…. Therefore, as an asset, a ‘Brand’
and/or a Trademark, can...
….. be disposed of separately from the other
company’s assets (it becomes a ‘freestanding’ asset); and
….. give rights that can be legally protected.
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Note ….
— In a highly competitive market, a company’s
brand will either ...
….. disappear much faster than their products’
trademarks protection period, or will be …
…. adapted to protect a different product over
time.
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… the Importance of a Trademark is
that it becomes ...
—
—
—
—
A marketing tool;
Source of revenue through licensing;
Crucial component of franchising
agreements;
May be useful for obtaining finance.
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The $ Value of a Brand;
….. of a Trademark
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The Value of Brands in 2004
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France
(June1, 2005)
Switzerland
(December 16, 2004)
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Spain
16 February 2004
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Australia
Singapore
(November 18, 2004)
(December 15, 2004)
Brazil
(June 2, 2004)
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Mexico
Chile
(June 11, 2003)
(August 5, 2002)
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{The ‘Social’ Value of a Brand}
by www.brandchannel.com
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Using the 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, etc.);
— Selling/assigning TM to another company (merger &
acquisitions/raising of cash).
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What is a Trademark?
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What is a Trademark?
A sign capable of distinguishing the
goods or services produced or
provided by one enterprise from
those of other enterprises.
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… a Trademark is ...
— Any distinctive sign, or any combination of signs;
 Words, including personal names, letters,
numerals, figurative elements (logos), combination
of colors, sounds, smells, etc.
 Visually perceptible; 2D or 3D (shape)
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Less or Non-Traditional Forms of TMs
 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;
• Trade-name vs Trademark.
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What are the Functions of
a Trademark?
— Allows companies to differentiate their products.
— Ensures consumers can distinguish between
products and ultimately develop brand loyalty
and Trust.
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Any Distinctive Words, Letters, Numerals,
Pictures, Shapes, Colors, Logo-types,
Labels or Combinations
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http://www.progress.com/trademarks/index.ssp
Any Distinctive Words, Letters,..
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Examples of Trademarks
• CyberGrid, MetaRules, High Tower, the High
Tower logo, and TowerView are trademarks or
registered trademarks of High Tower Software,
Inc. in the United States and other countries.
• HI-TECH C®, Pacific C™, Lucifer™, PPD™,
HPD™ and HI-TIDE™ are trademarks or
registered trademarks of HI-TECH Software.
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Protection through TM 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.
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Enforcing Trademarks
— Responsibility on trademark 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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Remember ...
… In many countries, to enforce trademark rights,
….. the owner of the trademark has to
provide evidence or proof of use of the mark in
relation to the goods or services specified in the
trademark register, aside from proof of infringement.
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Do’s and Don’ts
to preserve
distinctiveness and value
of a trademark
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Protecting trademarks begins
in-house...
• Trademark is instrumental to developing
brand identity and customer loyalty
• Important to preserve and enhance
distinctiveness and value of mark
Make proper
use of your
trademark
Protect it
from being
misused by
others
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1. Use Actively ...
… by offering the products, the services;
… Affix the mark to the goods or their packaging … in
promotional, instructional and reference materials; on
website, labels, packaging, business papers, invoices,
etc.
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2. Avoid Trademark from
becoming Generic
— Remember, the function of trademark is
…. to distinguish the goods/services
NOT to describe the goods/services.
— If the trademark becomes common use ...
– risks becoming generic; and
– a loss of protection will follow.
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Examples of Generic
Trademarks
•
•
•
•
•
•
Kleenex
Coke
Xerox
FedEx
Thermos
Yo-yo
= facial tissue
= soft drink
= photocopier
= overnight courier service
= hot water bottle
=
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A) Set TM apart from surrounding text__
Distinguish mark from surrounding text
– Use capital letters, bold, color, italics, underline,
quotation marks.
– This is to avoid the chance of the mark being
seen as generic term.
– Creates distinct commercial impression in minds of
consumers regarding the mark.
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Correct use:
Raymond Textile is India's leading producer of worsted
suiting fabric with over 60% market share.
‘Raymond Textile’ is India's leading producer of
worsted suiting fabric with over 60% market share.
Incorrect use:
Raymond Textile is India's leading producer of
worsted suiting fabric with over 60% market share.
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B) Specify font, size, proportion and placement___
— Consistently reproduce font / size /
proportion (especially if integral part of registered mark).
 This helps to maintain a uniform and
consistent look.
 It avoids confusing consumers.
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Correct use:
Incorrect use:
VIMAL
ADT
A ftosa
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C) Specify colors________________
 Color can be effective tool for creating brand
identification (many people use color as selection).
 If color is feature
 must always appear in correct colors
 must appear in color whenever possible
 If you license others to use your trademark
 provide color specifications
 monitor correct use
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D) Use trademark as adjective_____
 Avoid using as nouns or verbs;
 Use as adjective in association with a
descriptive noun;
 Non-adjectival use, over time, can result
in genericness.
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Correct use:
- Buy a Mafatlal suite from authorized dealers.
- Photocopy this for me on the Xerox copier.
Incorrect use:
- Buy Mafatlals from authorized dealers.
- Xerox this for me.
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E) Do not use in possessive form_______
Correct use:
- The great quality and design of Swarovski jewelry
Incorrect use:
- Swarovski’s great quality and design
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F) Do not change spelling _____
 Do not insert/delete hyphens;
 Do not merge words;
 Do not abbreviate (except when registered).
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Correct use:
Incorrect use:
- Calvin Klein
- Tommy Hilfiger
- Luis Vuitton
- MPC POTTERIES GWALIOR
- Kalvin Klein
- Tommy-Hilfiger
- Luisvuitton
- MPC P/G
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3. Use Trademark Notice ...
… ®, TM, SM ...
…. Not compulsory, but:


Alerts public that trademark is registered
May discourage illegal use
Where to place it:
With the name or logo of the mark
On products, advertising, websites, labels, etc.
NOT ® in countries where not registered!
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4. Register Domain Name
• Often most important asset of an online business
• Use trademark as SLD, if possible
• Choose carefully TLD
– .in
: if target audience is based in India. Not so
good if you're reaching out for global audience
– .com
: classic TLD for any site anywhere in the world.
BUT: not always available
– .biz
– .info
– .org
: for business sites
: for informational sites
: for nonprofit sites
– .coop
: for cooperatives
Greater availability
BUT: spammers
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5. Monitor authorized users
All types of users
 Licensees, franchisees
 Authorized resellers, retailers
 Brand owners
 Developers
 Advertising agencies
 Subsidiaries
 Customers
All types of use
 Promotional, instructional, reference material, website,
products, labels, packaging, etc.
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Control quality of goods and
services offered under the licensed
mark:

Bad quality damages your
reputation!
Monitor correct use (style, color,
etc.) of trademark:

Incorrect use confuses
customers + risk of loss of
protection
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Most Common Mistakes
Made by Exporters
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1. Believing that Trademark
Protection is Universal
• Trademark rights are territorial
• In many countries only protected if registered
• Registration abroad
– ‘national route’
– ‘regional route’
– ‘international route’ (Madrid Protocol)
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2. Using Trademark that is
already Registered/Used by
Competitors in Export Market
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3. Using Trademark that Conflicts
with Geographical Indication
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4. Not applying for Trademark
Registration until it is too late
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5. Leaving ® on product/packaging
when exported in country where
trademark is not registered
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6. Launching product in export
market without checking whether
trademark is likely to be considered
distinctive and has no undesired
connotation in local language
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Ensure the Proper Use of a
Trademark...
 It is crucial to acquire, register and maintain the
mark;
 Avoid the risk that the mark will become generic;
 Preserve the mark’s ability to identify ‘origin’ of the
products;
 Maintain a consistent business image so that it
provides immediate recognition and creates
goodwill.
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What is an Industrial Design?
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Source: Design Council publication, “Competitive Advantage Through Design”, www.designcouncil.info
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Industrial Design:
An Important Branding Tool
 Just as trademarks distinguish your
product or service, ….
…. industrial designs differentiate your
products from those of the competition.
 Both are intellectual property tools that
contribute to your branding strategy and
therefore need protection.
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What is a Design?
… In everyday language often it is
 the “look” of a product which we like
because we find it is attractive and appealing to our
eyes;
… For businesses, designing a product implies
 developing a product’s functional and
aesthetic features taking into consideration issues
such as marketability, costs of manufacturing, ease
of transport, storage, repair and disposal.
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What is an Industrial Design?
... In an Intellectual Property law perspective, it
refers ...
 only to the ornamental or aesthetic
aspects of a product ...
… even when the product may have a
technical (Patents) or functional feature, or
distinguishing features (Trademarks).
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Two-dimensional Designs
- Ornamentation, patterns, lines or color on a product
Wallpaper, carpets, textiles, etc...
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Three Dimensional Designs
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Packaging, containers, bicycles, even computer design, etc...
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The Value of a Creative Design
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Industrial Design helps to ...
1. Make a product attractive and appealing:
-- may be unique selling point;
2. Target specific market segments:
-- i.e. customization: by making small modifications to
make product suitable for different age groups, cultures or
social groups
3. Create a new market niche:
-- to differentiate product from those of other
competitors, I.e, locks, shoes, cups and saucers, etc.
4. Strengthen brands:
-- combined with distinctive trademarks to enhance the
distinctiveness of a company’s brand.
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“Design - the business case”
“… There is compelling evidence that businesses which use design
perform better.
Design Council research found that while 90% of businesses which are
growing rapidly say design is integral or significant to them, only
26% of static companies say the same.
As well as increasing market share, using design can help to
reduce costs by making manufacturing processes more efficient and
cutting materials costs. It can also reduce the time to market for new
products and services.
It is significant that while a third of the UK's fastest growing
companies surveyed by the Design Council in 2005 see design as integral
to their running, only 11 per cent of shrinking firms say the same. Also,
almost 70 per cent of companies which see design as integral have
developed new products and services in the last three years, compared to
only a third of businesses overall.”
Source: Design Council, UK, www.designcouncil.info
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“Design and your strategy”
“… One of the best-known examples of a business transformed by
the strategic use of design is Apple Computer.
The development first of the iMac and now the iPod (both the work
of a team led by Briton Jonathan Ive), have transformed Apple's
fortunes.
A fine creative achievement but, just as importantly, also a great
advert for the design-aware management culture, led by CEO
Steve Jobs, which enabled that creativity.
Remember too that it wasn't just about putting a brightly coloured
shell around the same old computer, or coming up with a slick shape
for a new music player. Ive's team creating an improved user
experience and Apple's design process embraced every single
component and the entire manufacturing process as well as
integrating the iTunes music service.”
Source: Design Council, UK, www.designcouncil.info
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Many regard Apple's iMac a masterpiece of product design.
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Using ID as a Business Asset
Licensing
– additional source of revenue
– exploiting a company’s exclusivity over design
– licensing contracts
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Reasons for Protecting Designs
Example: in the EU ..
•
•
•
•
•
•
70% prevent copying
23.4% company policy
20.3% get ahead competition
10.1% prestige
6.5% prevent people think “I copy”
5.8% other
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By Protecting Industrial Design through
Registration, the Owner Obtains:
 Exclusive right(s) to prevent unauthorized copying or
imitation by others;
 A fair return on investment;
 A business asset which will increase the commercial
value of a company and its products;
 A registered design that may be licensed (or sold);
 Encourages fair competition and honest trade
practices.
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What can be Registered
as an Industrial Design?
…. A design must be
 “NEW” -- i.e. if there is no identical design already
made available to the public before the date of filing, or
application for registration.
 “ORIGINAL” -- must be independently created by
designer, and not a copy or imitation of existing designs.
 “INDIVIDUAL CHARACTER” -- overall impression
produced by a design must differ from the overall
impression produced by an earlier design made available
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to the public.
Many regard Apple's iMac a masterpiece of
product design.
‘Blauwerk’ bicycle/scooter by Philippe Starck
The Stethoscope Reflex Hammer, PharmaDesign
Virgin Trains
Swatch watches
'Analog Pad' by Oriol Mogas Bartomeu
Duracell flashlight
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Manor Born - packaging and branding redesign
License agreement
License Agreement for S. ten Broeke Royalty-Free Icons. This is a legal agreement
between You, the purchaser, and S.ten Broeke, Inc. ("Qualityicons.com"). By
opening the CD package, you agree to the following: All of the icons remain the
property of S. ten Broeke. The icons can be used royalty-free by the licensee for
any personal or commercial projects. This is a non-exclusive license. Modifications
to the image data are limited to combinations of the included icons and to hue,
saturation, brightness adjustments. These icons may not be resold or redistributed
by the licensee or included in any product wherein the icons will be resold or
redistributed (in whole or in part).
Custom design
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Protecting Computer Generated
Designs through Registration
Korean Intellectual Property Office (KIPO) extends design protection in Korea by
accepting applications of Computer Generated Graphic designs under amended
Guidelines for Examination of Design Applications.
The KIPO, as of July 1, 2003, accepts design applications of Computer Generated
Graphics such as Graphic User Interface (e.g. a website GUI, software GUI, and
mobile GUI), icons (e.g. an application icon, tool icon, and GUI icon), and graphic
images (e.g. a character, screen saver, contents graphic, 3D animation, and emoticon).
In order for a computer-generated graphic to be protected under the Korean Design
Law, the article to which the image is embodied or applied must be a subject matter
for design. For example, any article of manufacture with a display panel such as a
computer monitor, mobile phone, PDA, navigation system, refrigerator, washing
machine, photo copier, MP3 player, CD player, MD player, digital camera, digital TV,
ATM, and POS terminal is an appropriate subject matter for design of a computergenerated icon. However, a design of a computer-generated graphic that is separate
from the object to which it is applied will simply be rejected.
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Protecting Industrial Designs through
Registration
— The Applicant
• application form, contact details, drawings or
photographs of design, written description or
statement of novelty, fee.
— The IP Office
•
•
•
•
formal examination;
substantive examination;
design register/design gazette;
design registration certificate valid at least 10 years.
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Swatch watches
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Scope of Rights
— The right to prevent unauthorized copying
or imitation by third parties;
— Exclude all others making, offering,
importing, exporting or selling product with
the design.
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Keep in Mind ...
 The time it takes to register a design;
 The cost of registration’
 Keeping design secret prior registration;
 Grace period;
 Who may apply for ID protection;
 Who owns the right over ID.
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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 agreement: African
Regional Industrial Property Office (ARIPO); Benelux
Design Office; Office for Harmonization of the Internal
Market of the EU; Organisation Africaine de la Propriété
Intellectuelle (OAPI).
• The international route
– Hague agreement - Administered by WIPO (36 countries)
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NOTE …. on the Hague agreement ...
 An applicant can file for a single international
deposit with WIPO or with the national office in a
country party to the treaty.
 The design will then be protected in as many
member countries of the treaty as desired.
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Enforcing Industrial Designs
— Responsibility on owner of the ID to monitor, identify
imitators/counterfeiters and decide on action;
— Advice of IP lawyer;
— “Cease and desist” letter to infringer;
— Search and seize order;
— Cooperation with customs authorities to prevent
importation of infringing goods.
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Remember what cannot be protected
— Designs that fail to meet requirements of novelty,
originality and/or individual character;
— Designs dictated by technical function;
— Designs with official symbols or emblems;
— Designs contrary to public order or morality
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Industrial Design Issues Affecting
Various Types of Business Decisions
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The type of protection and its cost or
effectiveness may affect:
— which details should be disclosed to the designer,
especially when the designer is employed by a
contractor;
— whether to undertake design development entirely inhouse, to contract or commission an outside agency or
to do it jointly;
— timing of the initial use of a new design in advertising,
marketing or public display in an exhibition;
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— if and when to seek or continue to maintain design
registration;
— if and when to initiate action against unauthorized
and/or infringing acts of competitors, counterfeiters
or importers;
— if and when to license or partially assign a design;
and
— if and when to register the design in other markets
for export or for exploring the potential of entering
into strategic business alliances, joint ventures,
setting up wholly owned subsidiaries, etc.
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