The Small and Medium-Sized Enterprises (SMEs) Division of WIPO ORIENTATION PROGRAM ON INTELLECTUAL...
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Transcript of The Small and Medium-Sized Enterprises (SMEs) Division of WIPO ORIENTATION PROGRAM ON INTELLECTUAL...
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 VerbauwhedeConsultant, 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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
“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”
What is a Trademark?
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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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.
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
IP and Marketing
• Collective marks• Certification marks• GIs
Trademarks
Individual marketing
Joint marketing
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
3.
Collective Trademarks
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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
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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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)
Matterhorn, Switzerland
Eiffel Tower,Paris
Tower Bridge,London
• In some countries : can also be figurative element
• E.g. Eiffel tower, Egyptian pyramid
• E.g. birds, animals associated with a place
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
• 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
How does a GI work?
• 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)
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
• 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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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
- 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
Example: “Talavera de Puebla”
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
• National
• Regional
• International
How is a GI protected?
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: e.g. ‘made in Japan’; Egyptian cotton
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
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
• 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
Benefits for SMEs
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
– 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)
Disadvantages
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
Thank You
e-mail: [email protected]
http://www.wipo.int/sme/