Transcript ORIENTATION PROGRAM ON INTELLECTUAL PROPERTY FOR MANAGEMENT STUDENTS OF INDIAN INSTITUTE OF MANAGEMENT (IIPM) Geneva, Switzerland, 2006 The Small and Medium-Sized Enterprises (SMEs) Division of WIPO.

ORIENTATION PROGRAM
ON INTELLECTUAL PROPERTY
FOR MANAGEMENT STUDENTS
OF
INDIAN INSTITUTE OF
MANAGEMENT (IIPM)
Geneva, Switzerland, 2006
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
Marketing and Branding
Strategies:
The Role of Trademarks and
Geographical Indications
Lien Koglin Verbauwhede
Consultant, SMEs Division
World Intellectual Property Organization (WIPO)
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
1.
Marketing and Branding
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
Concept of Branding
• A company image as seen by the customer
• Good branding = getting people to recognize you first
• Having an effective logo with which customers can
identify you
• 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,
logo, name recognition, customer service, internal
training, team work, investment
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Purpose of Branding
• Gives a business a significant edge over the
competition
• Have the customer view a business 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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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
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The “Swoosh”
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
• Trademarks
• Industrial Designs
• Geographical Indications
3 IP Rights
crucial to
successful
branding
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
2.
Trademarks
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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”
Slovenia: “Sign, capable of distinguishing goods and services
in the course of trade”
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
• A distinctive sign: Identifies certain goods/services
as those produced or provided by a specific person or
enterprise
• Exclusive rights: To prevent others from using
identical or similar marks on identical or similar goods
• Renewable indefinitely !
• Registration is required in most countries (exception:
well-known trademarks)
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
Any Distinctive Words, Letters, Numerals,
Pictures, Shapes, Colors, Logotypes,
Labels or Combinations
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Less Traditional Forms
• Single colors
• Three-dimensional signs (shapes of products or
packaging)
• Audible signs (sounds)
• Olfactory signs (smells)
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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 (art 23)
• Certification marks
• Well-known marks: benefit from stronger
protection (art 22)
• Tradename vs Trademark
(art 21)
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
The Value of Trademarks
• A marketing tool
• Source of revenue through licensing
• Crucial component of franchising
agreements
• May be useful for obtaining finance
• A valuable business asset
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
Practical aspects
•
•
•
•
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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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 (Pajero)
• Suitable for export markets
• Corresponding domain name available
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Registration steps
• The applicant
– Application form, contact details, graphic illustration
of mark, description of goods, fees
• The trademark office
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–
–
–
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Formal examination
Substantive examination
Publication and opposition
Registration certificate valid for 10 years
Renewal
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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 (pr. of speciality)
– if well known: also for goods or services of a different
kind
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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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;
OHIM; Organisation Africaine de la Propriété Intellectuelle
• The international route
– The Madrid System administered by WIPO (78 member
countries)
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
Using a trademark
•
•
•
•
•
•
in marketing and advertising
on business papers
on the internet
as a business asset
affixing the mark to the goods or their packaging
importing or exporting the goods under the mark
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IP and Marketing
Trademarks
• Collective marks
• Certification marks
• GIs
Individual marketing
Joint marketing
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3.
Collective Trademarks
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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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
How does a collective mark work?
• Regulation of use (art 24 Slov Law)
– 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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
• Thus, function of collective mark is to
INFORM the customers :
– About the origin of the products
• e.g. ceramic artisan, member of a specific association in Llublijana
– About a level of quality or accuracy,
geographical origin, or other features set by
the association
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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
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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
 no licenses
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
Example: “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
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4.
Certification Marks
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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
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How does certification mark work?
• Regulations of use
– quality, composition or other characteristics of the
goods/services
– control measures
– sanctions
• Authorization to use
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–
–
–
anyone who meets with the prescribed standards
not confined to membership
generally: licence agreement (fee)
owner not allowed to use
• Control
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
Benefits for SMEs
• Guarantee for consumers of certain quality
• Benefit from the confidence that
consumers place in users of certification
mark
• Strengthen reputation
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
• 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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
Example: “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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
“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 is was
produced
 also protects against counterfeit labels
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5.
Geographical Indications
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
What is a GI?
• 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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
• Most commonly, consists of the name of the
place of origin of the goods
• Country, region, city
• E.g. Champagne (France), Nuoc Mam (Vietnam)
• In some countries : can also be figurative
element
• E.g. Eiffel tower, Egyptian pyramid
• E.g. birds, animals associated with a place
Matterhorn,
Switzerland
Tower Bridge,
London
Eiffel Tower,
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Paris
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)
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•
Unauthorized persons may not use GIs if such
use is likely to mislead the public as to the 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
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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
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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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
Example: “Talavera de Puebla”
- Considered to be one of the finest
ceramics in Mexico
- Handmade and painted by hand
- Historical linked with Arabic culture
- 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
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How is a GI protected?
• National
• Regional
• International
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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
• Cert: e.g. in the U.S.A.: Darjeeling, Swiss, Stilton
• Coll: e.g. Japan; agricultural label in France
– Passing-off, Unfair Competition,
Consumer Protection laws
• If reputation + misleading
• Pass off: e.g. Scotch whisky – Peter Scot in India
• Cons
prot:ande.g.
‘made inEnterprises
Japan’;(SMEs)
Egyptian
cotton
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Protection on international level
– No legally binding international register
for all GIs
– Bilateral agreements
• e.g. EU-Bulgaria for wine names
– International treaties
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
– 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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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)
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