Transcript WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

WIPO-ARIPO
National Seminar on Intellectual Property
for the Competitiveness of
Small and Medium-Size Enterprises (SMEs)
Harare, February 7 to 9, 2007
Getting Noticed:
The Role of Trademarks, Geographical
Indications and Industrial Designs
SMEs Division 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.” Nothing happened.
• 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.)
Concept of Branding
• 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 attracts customers
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
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
Purpose of Branding
• Gives a business/enterprise a significant edge over the competition.
• Makes the customer view a business/enterprise as the only solution to
their need or problem.
• A strong brand engenders feelings of trust, reliability, loyalty and
recognition in the customer’s mind.
• Through its brand image an enterprise will attract and retain customer
loyalty for its goods and services and increase the value of its business.
Successful Branding
• Developing a brand part and parcel 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.
• Sell the brand outside and inside: Motivate employees to identify with
brand, communicating the brand image at all levels of operation.
• Intellectual Property Rights such as trademarks and industrial designs
important tools for branding.
Plan to Brand
• Developing a brand is a milestone in the preparation of every
strategic business plan.
3 IP Rights
• Trademarks
• Industrial Designs
• Geographical Indications
crucial to
successful branding
Trademarks
What is a Trademark (TM)?
• “A sign capable of distinguishing the goods or
services produced or provided by one enterprise
from those of other enterprises”
Any Distinctive Words, Letters, Numerals,
Pictures, Shapes, Colors, Logotypes, Labels
In some countries: sounds, smells and three-dimensional marks
• Examples:
Types of TMs
• 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
The Function of a TM
• Allows companies to differentiate their products.
• Ensures consumers can distinguish between products.
• Promotes customer loyalty/ reputation / image of company.
• Secures investment in marketing effort.
• Exclusive rights obtained through registration prevent others
from marketing products under same or confusingly similar
mark.
• Registered marks may be licensed or basis for franchising.
The Value of TMs
• A marketing tool
• Source of revenue through licensing
• Crucial component of franchising agreements
• May be useful for obtaining finance
• A valuable business asset
Value of TMs in 2004 (*)
•
•
•
•
•
•
•
•
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
* ($ Millions)
Source: Interbrand
Things to remember
in selecting a TM
• 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
A few more important points
• TM must be distinctive: not generic, descriptive, deceptive or contrary to
public order or morality.
• TM is a territorial right.
• TM must be registered (protection through use weak and only in some
countries).
• TM must not be confusingly similar to other trademark for similar or
identical goods (trademark search critical).
• TM cannot be confusingly similar to a Geographical indication.
• It is the responsibility of the TM owner to identify TM infringement and
take action against infringers.
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
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
Keep in mind
• The time it takes to register a
TM
• A trademark agent may be
required
• The costs associated with TM
protection
• Protecting at home and abroad
• Renewing your registration
• The need for a trademark search
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 (80 member countries)
The Nike’s case
• 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 “Swoosh”
IP & Marketing
Trademarks
• Collective marks
• Certification marks
• GIs
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
– 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. Café de Colombia with its label of Juan Valdez
• 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
Case Study: “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
Case Study (2): Melinda
• Used by 5,200 apple
producers of the Valle del Noce
in Northern Italy
• Over half of them have less than
one hectare
• Strict rules not only on the product but also on
production techniques and packaging of the
product
• Important market share in Europe and beyond
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
Case Study: “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 was produced
 also protects against counterfeit labels
Geographical Indications
(GIs)
What is a GI?
“indications which identify a good as originating in a country,
region or locality where a given quality, reputation or other
characteristic is essentially attributable to its geographical
origin.”
– Used mainly for wines, spirits, cheese and other food products
– Different countries protect them in different ways
– Common examples: Champagne, Roquefort, Chianti, Parma ham, etc.
– There must be a clear link with the territory
How does a GI work?
• 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
• 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)
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
More 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
Case Study: Tequila
– In 1977 el Tequila was registered as an appellation of origin in
Mexico.
– Internationally registered through the Lisbon Agreement and
through mutual recognition with the USA, EU among others.
-
In 1994 the Tequila Regulator Council was founded.
-
Only the producers from 5 Mexican States where a
specific variety of “agave”grows are entitled to
produce “Tequila”.
-
In 2006, 242.6million liters of Tequila were produced,
giving employment to 36,000 people.
Case Study (2): “Talavera de Puebla”
- Considered to be one of the finest
ceramics in Mexico
- Handmade and painted by hand
- Historical linked with the Spain
settler since XVI century
- 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
How is a GI protected?
• National
• Regional
• International
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
• Certification: e.g. in the U.S.A.: Darjeeling, Swiss, Stilton
• Collective: e.g. Japan; agricultural label in France
– Passing-off, Unfair Competition, Consumer Protection
laws
• If reputation + misleading
• Passing off: e.g. Scotch whisky – Peter Scot in India
• Consumer protection: e.g. ‘made in Japan’; Egyptian cotton
Protection on international level
– No legally binding international register for all GIs
– Bilateral agreements
• e.g. EU-Australia for wine names
– International treaties
• e.g. TRIPS, Lisbon
– 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
Benefits for SMEs
• 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
Disadvantages
– 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)
Industrial Design
Industrial Design 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.
“ The Form of a Product”
• What is Protected: the Aesthetic Feature of a Product not the
Technical (Patents) nor Distinguishing Features (Trademarks)
Two-dimensional Designs
Three Dimensional Design
The Value of a Creative Design
•
Makes a product attractive and appealing
•
Target specific market segments
•
Create a new market niche
•
Strengthen brands
Business Strategy
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•
•
•
•
•
•
•
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Integrate issues of design protection into a broader business strategy
Costs
Type of protection
Ownership issues
In-house development or outside agency
Timing
Advertising, marketing, public display in an exhibition
Export markets?
License?
Legal Considerations
REQUIREMENTS
• The design must be NEW
• The design must be ORIGINAL
• The design must have
INDIVIDUAL CHARACTER
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
Industrial Design
protection> registration =
• Exclusive right to prevent unauthorized copying or imitation by
others.
• Return on investment
• Business asset increasing commercial value of a company and its
products
• Registered design may be licensed (or sold)
• Encourages fair competition and honest trade practices
Protecting ID 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
Reasons for protecting designs in 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
Broken Line Practice
Front Body Portion of a Car
Rear Body
Portion
Disclaimed
Grilles
Disclaimed
Source: Robert Katz
Wheels
Disclaimed
Feature Omission Practice
Nike Air Max Plus
Shoe and Upper
Design Patent
Trademark
omitted
in design
claim
Multiple Claim
Scope Example
U.S. Pat. Nos. D452,282 and
D452,534
Draft Generic Claims
Low Version
Nike Air Mada 2
Generic Patent Claim
Mid Version
The Hague Agreement
Registration and Administration of Industrial Designs up
to 45 States / Contracting Parties by means of •
a single procedure
•
with a single administration (WIPO)
•
in one language (English or French)
•
on payment of a fee in a single currency (Swiss Francs)
Advantages of the Hague System
For Industrial Design Owners
•
Simple, efficient and cost-effective procedure
for obtaining protection for industrial designs in the
(45) countries bound by the Hague Agreement.
•
Effective and economical means of maintaining
protection and subsequently managing the
registration.
THANK YOU
Email:
[email protected]
http:/www.wipo.int/sme/