Transcript SMEs Division Branding and Marketing - Role of Trademarks and Geographical Indications - May 2007, Geneva Won-Kil YOON Counsellor, SMEs Division World Intellectual Property Organization (WIPO)

SMEs Division
Branding and Marketing
- Role of Trademarks and Geographical Indications -
May 2007, Geneva
Won-Kil YOON
Counsellor, SMEs Division
World Intellectual Property Organization (WIPO)
SMEs Division
1.
Branding & Marketing
SMEs Division
SMEs Division
Why does a brand matter?
“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.”
SMEs Division
What is Branding?
• Making company image as seen by the customer
• Good branding : getting people to recognize your
product as the best in the market
• Brand : what differentiates you mostly from your
competitors in the market
- Co-branding : useful for entering new markets (ex. LG-Phillips)
- Multibranding : useful for attracting various consumers
ex.) For core premium customer : Nike brand
For discount shoppers : Starter brand
For “lifestyle” consumers : Converse Sneaker brand
SMEs Division
Guiding Principles
to make a Good Brand
Able to be protected as a trademark
Easy to read, write and remember
Acceptable in major overseas markets
Able to be registered as domain name
The best brand
for your business
SMEs Division
Best Global Brands
Brand
1. Coca-Cola
2. Microsoft
3. IBM
Sector
Computer Services
67,000
56,926
56,201
-1%
-5%
5%
Diversified
48,907
4%
5. Intel
Computer Hardware
32,319
-9%
6. Nokia
Telecom Equipment
30,131
14%
7. Toyota
Automotive
27,941
12%
8. Disney
Media/Entertainment
27,848
5%
4. GE
Beverages
2006 Value ($m) Change in Brand Value
Computer Software
(Best Global Brands 2006, Interbrand, www.interbrand.com)
SMEs Division
2.
Trademarks
SMEs Division
What is a Trademark?
“A sign capable of distinguishing the
goods or services produced or provided by
one enterprise from those of other
enterprises”
SMEs Division
Any Distinctive Words, Letters,
Numerals, Pictures, Shapes, Colors,
Logotypes, Labels or Combinations
SMEs Division
Some Concepts of Trademarks
Trade mark to distinguish goods
Service mark to distinguish services
Collective
mark
to distinguish goods or services by
members of an association
Certification to distinguish goods or services certified
mark
by a certifying authority
Well-known very famous in the market and
mark
as a result benefit from stronger protection
SMEs Division
SMEs Division
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
SMEs Division
What to avoid when selecting a
trademark
• Generic: CHAIR to sell chairs
• Descriptive: SWEET to sell chocolates
• Deceptive: “ORWOOLA” for 100% synthetic material
• Marks contrary to public order/morality
SMEs Division
Less Traditional Forms
• Single colors
• 3-D signs (shapes of products/packaging)
• Audible signs (sounds)
• Olfactory signs (smells)
SMEs Division
Application:
single color?
• In principle, single color is considered as not distinctive
• Exceptionally, if it gets secondary meaning it may receive
TM protection
* secondary meaning : acquired strong distinctiveness through use
• However, colors are in limited supply …
- allowing companies to appropriate colors will soon lead to
the "depletion" of all attractive colors in each product line
- preventing use of color would put competitors at a
significant disadvantage
functionality test
SMEs Division
Single color?
Blue Frozen Desserts
(Ambrit v. Kraft)
US Courts
•Royal blue is a “cool
color”. It is suggestive of
coldness and used by a
multitude of ice cream and
frozen dessert producers
•Royal blue when used to
package frozen desserts is
functional and can not be
monopolized in a
trademark
SMEs Division
Application:
3D trademark?
• Lego: Patent expired in 1988
- competitors (Tyko, Mega Bloks,
COKO): identical "legos" that are
interchangeable and compatible
with Lego system
• The Lego brand is all they have
left …
• Tried 3-dim Mark
?
Canadian court + OHIM:
No TM rights in purely
functional elements of a
product.
If LEGO is unable to rely
upon patent protection for
those utilitarian features,
then those features are
available for all to use.
SMEs Division
Ways to Use Trademarks as
Business Assets
• Marketing tool
• Source of revenue through licensing
• Crucial component of franchising
agreements
• May be useful for obtaining finance
• Sale of TM itself
SMEs Division
Registering a Trademark – Step by Step
1. Making a Mark
& Trademark Search
2. Application
5. Registration & Renewal
3. Formality Check
& Examination
4. Publication &
Opposition
SMEs Division
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
– if well-known: also for goods or services of different kind
SMEs Division
3 Ways for International Application
The National Route
- Application to
countries
in the required
language
- Priority right of 6
months under
Paris Convention
The Regional Route
- Application to
regional trademark
offices
- The African
Regional Industrial
Property Office,
OHIM for the EU,
etc.
The Madrid Route
- Application to the
countries of
Union or WIPO
- One international
application,
in one language,
subject to
one set of fees
and deadlines
SMEs Division
3.
Geographical Indications
SMEs Division
What is a Geographical Indicaton?
• 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
SMEs Division
• Mostly: name of place of origin
• Country, region, city
• E.g. Champagne (France)
• Some countries: also figurative element
• E.g. Eiffel tower, Egyptian pyramid
Matterhorn,
Switzerland
Eiffel Tower,
Paris
Tower Bridge,
London
SMEs Division
How does a GI work?
•
Basically, each enterprise located in the area has
right to use GI freely
For some products,
– Subject to certain quality requirements,
only authorized persons may use the GI
• 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)
SMEs Division
•
Unauthorized persons should not use GIs
since it could mislead public as to 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
SMEs Division
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
SMEs Division
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
SMEs Division
National legislation to protect
Geographical Indications
– Special system for protection
• Registration with IP office (Russia, Slovenia)
• 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, UC, Consumer Protection
• If reputation + misleading
• Pass off: e.g. Scotch whisky – Peter Scot in India
• Cons prot: e.g. ‘made in Japan’; Egyptian cotton
SMEs Division
Protection on international level
– No legally binding international register
for all GIs
– Bilateral agreements
• e.g. EU-Bulgaria for wine names
– International treaties
SMEs Division
- 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
SMEs Division
Benefits for SMEs
• Collective branding and marketing
– For good reputation, GIs shift focus of production to
quality
 increased production and 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
SMEs Division
WIPO SMEs Web-Site
“www.wipo.int/sme”
“Making a Mark” in Publications
“IP Panorama” in Multimedia
“E-NEWSLETTER”
Won-Kil YOON
[email protected]
Tel)+41-22-338-8159
Fax)+41-22-338-8760