Transcript The Relevance of Trade Marks for the Textile Sector WIPO National Seminar on IP for SMEs in the Textile Industry Damascus October 13 and 14,

The Relevance of Trade Marks
for the Textile Sector
WIPO National Seminar on IP for SMEs
in the Textile Industry
Damascus
October 13 and 14, 2010
Mrs. Lien Verbauwhede Koglin
Consultant, SMEs Division, WIPO
This Presentation
1. What is branding?
2. What is a trade mark?
3. What rights does trade mark registration provide?
4. How to select a successful trade mark?
5. How to register your trade mark?
6. How to enforce your trade mark rights?
7. How to do business with trade marks?
8. Conclusions
Question 1
WHAT IS BRANDING ?
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
What is a Brand ?
A brand represents the holistic sum of all
information about a product
It is a symbolic construct which typically consists of:
— name
— identifying mark
— logo
— visual images, colors or symbols; or
— mental concepts.
What is a Brand ?
Gives a clear message to the customer about the kind
of company he is dealing with, what its product is,
and who the clients are.
A strong brand will engender feelings of trust,
reliability, loyalty and recognition in the customer’s
mind -> will increase the value of the company.
Importance of Branding for Textile Industry
Characteristics of the Textile Industry:
Very changeable environment
Strong, intense competition caused mainly by
enlarging globalization
Becoming more and more difficult for a company to
maintain long term success
Firms without any distinct features, without a clear
vision or specific mission, or without
permanent values, will sink in the mass
What to do for a Sucessful Branding Strategy?
Target what customers care about:
articulate precise values and qualities that are
relevant and of direct interest (E.g., China)
Chloe Marcie bag
Emphasize features that are both important
to consumer and quite differentiated from
competitors
Sell the brand outside and inside: Motivate
employees to identify with the brand
Keep brand flexible
Communicate the brand image at all levels
of operation
A Brand – A Trademark
Trademark:
Brand:
Legal concept
Marketing concept
Brand profile and positioning may vary over time,
but trademark protection will remain the same
Question 2
WHAT IS A TRADE MARK ?
What is a Trade Mark?
“A sign capable of distinguishing the goods or services
produced or provided by one enterprise from those of
other enterprises”
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
After P,
Renewable indefinitely !
all they have...
Registration is required in most countries
(exception: well-known trademarks)
Any Distinctive Words, Personal Names, Letters,
Numerals, Logos, Pictures & Drawings, Arrangements
of Colors, or Combinations
Less Conventional Trade Marks
Most countries: taglines, advertising slogans and
movie/book titles are also considered marks.
Some countries: single colors, three-dimensional
signs (shapes of products or packaging), moving
images, holograms, sounds, smells, gestures, tactile
marks (feeling or touch) and fluid/mutating marks.
However, many countries have set limits on what may be
registered as a mark, generally allowing only signs that
are visually perceptible or can be represented
graphically.
Syria: shapes, NOT singe color, NOT sound an smell (?)
Trademark Law, Art 2
Every sign that allows distinguishing the products of a
natural or artificial person shall be considered an
identifying mark & the identifying mark may consist for
example of the names, the appellations, the symbols,
the seals, the words, the letters, the features, the
embosses, the designs, the pictures, the signatures,
the imprints, stores names; groups, arrangement &
grades of colors, products shapes or packages that
have special distinguished form or any mixture of these
elements. In all cases, the identifying mark shall have to
be visible i.e. can be perceived by sight
Question 3
WHAT RIGHTS DOES TRADEMARK
REGISTRATION PROVIDE ?
Registration Provides Exclusive Rights
The exclusive rights allow you to prevent all others from
marketing identical or similar products under an
identical or a confusingly similar mark.
You will be able to prohibit competitors from :
 affixing the mark to goods or their packaging;
 stocking or selling goods bearing the mark, or
supplying services under the mark;
 importing or exporting goods under the mark; or
 using the mark on business papers, websites and in
advertising.
But! Exclusive Rights are Limited to...
the country or countries in which you have registered
the mark;
the goods/services for which the mark is registered;
situations in which consumers are likely be confused
by the infringing mark.
Question 4
HOW TO SELECT A SUCCESSFUL
TRADE MARK ?
1. Check Legal Factors: Grounds for Refusal
Generic words or signs
 CURTAIN to sell curtains
Descriptive words or signs
 SOFT to sell bed linen
Geographic words or signs, if they are geographically
descriptive
 DAMASCUS FASHION
Deceptive words or signs
 “ORWOOLA” for 100% synthetic material
Marks contrary to public order/morality
Flags, armorial bearings, official hallmarks, emblems
Religious symbols, names of holy places
Advertising slogans, if they consist of highly
descriptive and non-distinctive material and are
incapable of distinguishing the source
 NOBODY KNOWS COLOR BETTER for an upholstery fabric is
likely to be rejected
Functional features
shape of the handles and blade assembly for a pair of scissors,
which is necessary for the functioning of the scissors
handle as such on a coffee cup
Prior trademark rights
 Having two identical (or very similar) marks for the same type of
product could cause confusion among consumers.
 E.g., EASY WEAR® vs. EEZYWARE
 Trademark search!
In many countries, other prior rights
 Syria - Art 5 Trademark Law: well-known marks;
company name; GI; protected CR; registered design;
family names, etc
2. Choose a Strong Mark
Coined or fanciful: strongest, but great marketing effort
needed
 Prada
Arbitrary: very strong, still great marketing needed
 Esprit, Puma, Diesel
Suggestive: less protection, but attractive for marketing
 Speedo, Body Glove, Burqini
Descriptive: not protected, unless distinctive character
established through extensive use (art 3c Syrian Law)
 Fashion, Style, Soft, Comfort, etc
Generic: never protected
Case study: Burqini
From SmartStart Project of Australian IP Office
Aheda Zanetti, originally from Lebanon, is an Australian
Designer and Entrepreneur who designed in 2003 an
innovative solution to this age-old problem for women of
Muslim or Arab descent who wished to preserve their modesty
when enjoying sport and swimming: Burqini
Design registration and later Trade Mark registration for the
logo and company name
The head-to-toe two-piece suit is made from a high performance innovative fabric and takes its name from the Burqa
with its unique element Hijood – a variation of the hood shaped
Hijab worn by Muslim women to cover their head
The Burqini is now distributed worldwide through online sales
and key retailers in Bahrain and the Netherlands, along with a
stand-alone store in Sydney.
From http://www.ahiida.com/
3. Check Commercial Factors
Easy to read, write, spell and remember
Suitable to all types of advertising media
Avoid negative connotations in your own language +
potential export markets
 E.g., Negro for t-shirts (SP-ENG)
Domain name available?
Support with graphic elements (colors, designs) to
enhance the impact of the TM on consumers
4. Check Availability
Home country and potential export markets
Current product lines and potential future
products/services
Trade mark search
Question 5
HOW TO REGISTER YOUR TRADE
MARK?
Three Ways to Register
The National Route
The Regional Route
African Regional Industrial Property Office (ARIPO) for Englishspeaking African countries (www.aripo.org);
Benelux Office for Intellectual Property (BOIP) for Belgium, the
Netherlands and Luxemburg (www.boip.int);
Office for the Harmonization of the Internal Market (OHIM) for
Community trademarks (CTM) in the countries of the European
Union (www.oami.europa.eu); and
Organisation Africaine de la Propriété Intellectuelle (OAPI) for
protection in French-speaking African countries
(www.oapi.wipo.int).
The International Route
Madrid System
Advantages of Madrid
You can register your mark in all the countries party to the system
by filing:
 a single international application;
 in one language;
 subject to one set of fees and deadlines.
Thereafter, the international registration can be maintained and
renewed through a single procedure.
The Madrid system thus reduces the administrative burden and
costs involved in registering and maintaining marks in multiple
countries.
See: www.wipo.int/madrid.
TIP for SME: Use or Lose
Obligation to use the mark 3 years after
registration
 Art 8 Syrian Law.
 In relation to all the products or services
 As it is registered
Use of the mark includes …
 Placing mark on products or packaging
 Offering TM goods for sale; stocking TM goods;
importing/exporting TM goods
 Use TM on invoice, advertising, business paper, etc.
 Through license
Use in a consistent way + ®
TIP for SME: Protecting a Mark Abroad
Choose a local language mark. Register all variations
 Consult language specialists and be sure to select a strong mark
that has resonance with the local consumers
Monitor carefully for infringing marks
 Marks that sound and look similar, or have the same meaning.
Also prior registered domain names.
Get familiar with the local trademark system
TIP for SME: Protecting a Mark Abroad
File broadly
 In all relevant classes. Also for products you might use in future.
 Even if you are only manufacturing (not intending to sell there)
 Even if you only grant licenses there
File in time
 6 month priority term
 Before actual importation of any goods and even prior to meeting or
negotiating with other businesses in the foreign countries (esp if
first-to-file country)
Question 6
HOW TO ENFORCE YOUR TRADE
MARK?
Another Trade Mark Infringes Your Rights ...
when a competitor uses the same or a confusingly
similar mark
for the same or similar products
in a country where your mark is protected
Most times, the question becomes whether a specific
mark is too close to yours, so that the consumers are
likely to be confused.
Likelihood of Confusion is Increased ...
If you have a strong mark.
registered, how distinctive, since when used, how much
advertising done.
If the two marks are very similar.
the marks’ look (two similar logos), sound (Light, Lite), and
meaning (White Horse, Cheval Blanc).
If the products are very similar.
If there is evidence of actual confusion.
Proof: misdirected mail, faxes, email and telephone calls,
consumer complaints, survey.
If the products are marketed through the same marketing
channels.
Remedies
Cease and desist letter
Surprise action by search and seize order (if willful
infringement)
Border measures
Many customs can search, examine and seize goods that they
suspect infringe trademark (or other IP) rights.
Arbitration and Mediation
Court proceedings
Question 7
HOW TO DO BUSINESS WITH
TRADE MARKS ?
THE RELEVANCE OF
TRADE MARKS FOR THE
TEXTILE SECTOR
CONCLUSIONS
Checklist for Good TM Strategy
Select a valid and strong mark. Consider future export markets.
Conduct a trademark search in your home country and potential
export markets and expansion lines.
Register the mark early (before marketing and product launch).
Bear in mind the 6 month priority term for foreign applications.
Renew your registrations if desired.
Display the ® symbol.
Capitalize from the licensing of your mark.
Don’t let others confuse the public. Detect misuse of your mark,
and promptly notify the infringer to cease and desist.
Call upon the customs service, if available, to prevent
importation/exportation of infringing merchandise.
The Importance of Proper
Management of Trade Secrets
Thank You!
[email protected]
www.wipo.int/sme