KEY ASPECTS ON IMPROVING IP AWARENESS BY BRAZILIAN MSMEs: THE ROLE OF IP OFFICE Differentiation...
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Transcript of KEY ASPECTS ON IMPROVING IP AWARENESS BY BRAZILIAN MSMEs: THE ROLE OF IP OFFICE Differentiation...
KEY ASPECTS ON IMPROVING IP AWARENESS BY BRAZILIAN
MSME’s: THE ROLE OF IP OFFICE
Differentiation Strategies: Role of IP in Building Trust and Branding
by MSMEs
Rome, Dec 2009
Objectives
To present the Brazilian IP Office point of view regarding MSME’s issues;
To discuss some aspects of the relationship between TM system and MSME’s;
To present some measures taken to enhance IP access by MSME’s
Role of IP in Branding by MSME’s: the importance of IP offices
In the knowledge society, intangible assets give MSME’s the opportunity of being more competitive and innovative;
Intellectual property rights, like trademarks and patents, configure crucial strategies for economic growth, mainly in the peripherical countries;
Trademarks, given the fact that they can be renewed indefinitely, are a very attractive mode of boosting profits and the reputation of companies;
So, the reflection about a system that enables MSME’s to participate on this scenario, in fair conditions, must be part of the IP offices agenda.
Role of IP in Branding by MSME’s: the importance of IP offices
Any branding strategy taken by a small company is not complete if legal aspects are not observed;
Since trust and reputation come together with a name, branding strategies must be concerned with the appropriability of a name, which is capital for creating value from the feelings, ideas and images born from a sign;
So, the role of IP offices ,as a key part of IP policy-making, is crucial for garantee equal access to TM system and the awareness of the importance of registering trademarks.
Brazilian MSME’s: some data and features
98% of Brazilian enterprises are MSME’s; The mortality of MSME’s is around 22%, in
average; Low capital intensity; High birth and mortality rates; Low investment on innovation;
Brazilian TM system in a glance
It’s a first-to-file system; 120.000 applications last year in a single
class system; Opposition period comes after initial TM
publication and before examination; Registered TM to be renewed every 10
years; Still some backlog, but totally managed
Brazilian TM system in a glance
TM Applications - 2000 to 2009
0
20.000
40.000
60.000
80.000
100.000
120.000
140.000
2000
2001
2002
2003
2004
2005
2006
2007
2008
2009
TM Applications
MSME’s and the TM system: a short diagnosis In Brazil, 87% of TM applicants are small
enterprises; In general, they have lack of IPR’s expertise; High quantity of rejected Trademarks; When approved, their trademarks are considered to
be “weak”ones; Very often, they simply lose their trademarks by not
observing legal deadlines Increasingly number of legal disputes on IP subject; Sometimes, the registration of a commercial name
is seen as much more important than a registered trademark;
MSME’s and the TM system
Users of TM system, by the size of the company (2000 to 2008)
87%
13%
MSME's
Big Companies
MSME’s and the TM system
Applicants (% of total) by number of TM's filed during a year - 2000 a 2008
0%
20%
40%
60%
80%
100%
2000 2001 2002 2003 2004 2005 2006 2007 2008
7 files or more
2 to 6 files
1 file
What do the MSME’s want from IP offices?
Simple and user-friendly systems Predictable and uniform results Responsiveness Legal certainty
Focus on the small: tensions to be solved by IP offices
To organize competition x To let the market regulate itself;
Public interest x Market interest Staying reactive x going proactive
Risky scenario for MSME’s: poor expertise + Superpopulation of trademarks We receive a huge number of TM applications every year
– So, nowadays, we have a very populated database, organized in 45 Nice Classes, some of them extremely populated – e.g. class 35 (business management)
"Living" and "Dead" TM's
1.062.9781.144.094
Living TM
Dead TM
Risky scenario for MSME’s: poor expertise + Superpopulation of trademarks Since our examiners do ex-officio searches,
more than 1 million of trademarks can be considered impeditive for a new application;
Considering that MSME’s have a slightly poor knowledge of the system, the likelihood of getting a TM denied is very high;
It means less profits and probable damage for previous investments on product development.
Risky scenario for MSME’s: poor expertise + Superpopulation of trademarks
Given this scenario, it’s important to think about a new pattern for the services offered to the MSME’s by IP offices
Emerging Trends on TM Management by IP office: disseminating IP culture
Since 2004, Brazilian IP office provides training on IP themes for academics, lawyers and entrepreneurs;
Topics like trademarks, patents, designs and geographical indications are discussed, always aiming at regional reality and local needs;
6,000 people have been trained, in basic, intermediary and advanced modules;
In this sense, believing on the multiplication power of such training sessions, the dissemination of IP culture can be considered as a first action towards a closer relationship between IP office and the small companies.
Emerging Trends on TM Management by IP office: less oppositions Oppositions triplicate the waiting time for the
examination; Today, 20% of the applications are opposed by thrid
parties; Oppositions make the whole process more costly:
it’s tough for the opponent, the applicant and the office;
When a SME is suffering an opposition, they barely can response adequately. It’s hard for big companies, and it’s even hard for the small ones;
So, why can’t we ask both parts to give up, in order to cancel the opposition procedure?
Emerging Trends on TM Management by IP office: clustering examination
Our work procedures have led us to take a linear examination, making us dependent on bad routines, often useless and irrational
We have already realized that by clustering the demand flux, dividing it into specific categories of requests, we could increase efficiency and the consistency of examination results ;
Making teams to deal with specific demands: in general, small companies need permanent care, especially in the initial steps of dealing with the system;
So, with a non-linear work strategy, it will be possible to group the requests of various small companies in order to allow the examiner a better knowledge of their reality;
Clustering examination process will reduce random results and, somehow, make examiners acquainted to the companies behind the brands.
Emerging Trends on TM Management by IP office: previous TM assesment for MSME’s It is really necessary a better frame for processing
MSME’s demands, since they represent almost 90% of our users;
Many IP offices have already realized that a previous assesment program, demand driven, is the best way of avoiding bad applications;
So, if we could offer them more than previous search records, it would be a powerful tool for branding process as a whole;
Results: less TM applications denied, less needless conflicts and more legal certainty.
Emerging Trends on TM Management by IP office: making simple systems
A simple system is an appealing step to narrow distances between the companies and the office;
Since 2006, we have offered a total paperless system which provides electronic forms for any kind of service at TM office;
It became succesful because it was a system planned for small companies: in 10 minutes, a non-experienced user can file an on-line TM application;
Nowadays, 70% of applications are done ellectronically; and the number of applications done without a legal agent increased 15% since then.
Thanks!
Vinicius Bogéa CâmaraBrazilian National Institute of Industrial Property
Advisor, Trademark [email protected]