Brand and Trademark Mgt

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LAUNCHING NEW PRODUCTS IN THE MARKET

Unleashing the Power of Branding through

Trademarks

(updated 2006)

Caroline Schwab - Program officer

Small and Medium-Sized Enterprises Division

WIPO - World Intellectual Property Organization



Branding and

trademarks are keysto success in businessand in the global

market



YESTERDAY¶S OPERATION:

- Technology Brands

- E-mails Campaigns

- PR in place of advertising

- Viral Marketing

TODAY:

- Lifestyle Brand

- Authenticity Marketing

- Product Placement

- Viral Marketing

- Brand Culture



What is Branding

� Branding -- is the process by which thename or the identify of an owner, acompany/enterprise or organization, is

communicated.� Branding allows a company to differentiate

its products and services from thecompetition by creating a bond with itscustomers. It aims to create customerloyalty.

� This way, a company takes a position in themarketplace.



What is Branding

� A way by which companies launch and sellgoods & services.

� A brand name is sometimes made of a part

or the totality of a trademark name� It communicates the essence of a products

or its line, including why it is great and howit is better than all competing products.

� It reflects in general a prestigious (aesthetic)image in order to attract more consumers.



SUCCESSFUL BRANDINGAttracts / catches the consumers

� Developing a brand is part of every strategic

business plan

� Target what customers care about: articulate

precise values and qualities that are relevant

and of direct interest

� Emphasize features that are both important to

consumer and quite differentiated fromcompetitors

� Communicate constant innovating brand image

at all levels of operation



THE PINK PANTHER IS A WORLDWIDE

PROTECTED CHARACTER USED AS A MARK, AS A

COPYRIGHT & AS AN INDUSTRIAL DESIGN.



TRADEMARKS

ARE FOR EVER



10 Points aboutTRADEMARKS



10 POINTS ABOUT TRADEMARKS1. Product or service Image (Identity)

2. Distinguish goods or services among others

3. Play a pivotal role in the branding/marketing Strategy

4. Can be extended to any country5. Defines a certain image - builds a reputation

6. Is a marketing tool - enabling licensing & franchising

7. Is a valuable IP business asset

8. Encourage companies to invest, maintainand improve product quality

9. Once protected, are useful for obtaining financing

10. Can be put in the stock exchange

Before launching a trademark - key to success is

CLEARANCE



What is a Trademark ?

� A BRAND NAME - A KIND OF VISIT CARD THATPROMOTES THE IMAGE OF A COMPANY

AND ITS RANGE OF GOODS & SERVICES.

� ³A sign distinguishing goods or servicesproduced or sold by one enterprise (from those

of other enterprises)´.



Less traditional forms

� Single colors (Louis Vuitton)

� Three-dimensional signs

� (shapes of products� or packaging)

� Audible signs (sounds)

� Olfactory signs (perfume)



Types of Trademarks?

� Trade marks: to distinguish goods

� Service marks: to distinguish services

� Collective marks: to distinguish goods or services bymembers of an association

� Certification marks

� Well-known marks: benefit from stronger protection

� Tradename (Brand name)



The function of a Trademark

� ALLOWS COMPANIES TO MARK A

TERRITOR Y, EXPRESSING SPECIFIC

FUNCTIONS AMONG SIMILAR PRODUCTS IN

THE MARKET.

� ENSURES THAT CONSUMERS CAN IDENTIFY

A LINE OF PRODUCTS.

� ENSURES EXTENSION OF THE MARK

THROUGH LICENSING OR FRANCHISING

PROCESS.



THE VALUE OF A TRADEMARK?

� A MARKETING TOOL

� SOURCE OF REVENUE THROUGH LICENSING

� CRUCIAL COMPONENT OF FRANCHISING

AGREEMENTS

� USEFUL FOR OBTAINING BANKS OR THIRD

PART FINANCE

�A VALUABLE BUSINESS ASSET



The Value of Trademarks

� Global Brand Scoreboard

� 1. COCA-COLA 67.52$ billion

� 2. MICROSOFT 59.95$ billion

� 3. IBM 53.37$ billion

� 4. GE 46.99$ billion

� 5. INTEL 35.58$ billion

� ( G erman survey January 17, 2006 )



Trademark protection >

Registration =

� EXCLUSIVE RIGHTS PREVENT OTHERS FROM MARKETING

PRODUCTS UNDER SAME OR CONFUSINGLY SIMILAR MARK

� SECURES INVESTMENT IN MARKETING EFFORT

� PROMOTES CUSTOMER LOYALTY/ REPUTATION / IMAGE OF

COMPANY

� PROVIDES COVERAGE IN RELEVANT MARKETS WHEREBUSINESS OPERATES

� REGISTERED MARKS FOR LICENSE OR BASIS FRANCHISING

AGREEMENTS



PRACTICAL ASPECTS

� Creating/selecting a trademark after CLEARANCE -

searching worldwide that there is not a similar one

yet legally protected

� Avoid IP offices¶ refusals or oppositions

� Protecting a trademark through national, regional

and WIPO registration system (Madrid & Protocol)

� Using and maintaining a trademark (paying fees,following notification of refusals, extending territory)

� Enforcing a trademark by Innovating (new products)



What to avoid when selecting

a Trademark

� Generic terms: CHAIR to sell chairs

� Descriptive terms: SWEET to sell chocolates

� Deceptive terms: ³ORWOOLA´ for 100% synthetic

material

� MARKS CONTRAR Y TO PUBLIC ORDER and

MORALITY

� AVOID USING FLAGS, ARMORIAL BEARINGS,

OFFICIAL HALLMARKS, EMBLEMS WITHOUT

LEGAL AUTHORIZATION



What to Remember when

selecting Trademark?

� Inherently distinctive

� Coined or fanciful words: ³Kodak´

± Arbitrary marks: ³apple´ for computers

± Suggestive marks: SUNNY for heaters� Easy to memorize and pronounce

� Fits product or image of the business

� Has no legal restrictions

± Reasons for rejection

± TM search>not identical or confusingly similar to existingTM

� Has a positive connotation

� Suitable for export markets

� Corresponding domain name available



Protecting a TM

through registration

� The applicant can file a request through his national office

� Right after filing through the IP Office, a trademark can be filed at

WIPO (Madrid & Protocol) - saving time and money

± WIPO offers free assistance, information & guidelines

± Filing application form, contact details, graphic illustration of

mark, description of goods, fees

± Registration certificate valid for 10 years

± Renewal & Publication (CD-Rooms /Gazette)

� The IP national office is the only authority in charge of :

± Formal examination

± Substantive examination

± Publication and opposition



The Madrid system for the international registration

of marks (the Madrid system) established in1891

functions under the Madrid Agreement (1891), and the

Madrid Protocol (1989) are administered by the

International Bureau of WIPO located in Geneva,

Switzerland.

This system for an international protection of

Trademarks and Brands is adopted by more than

70member states of WIPO, members of the

« MADRID UNION »

Madrid System for the

International Registration of Marks



The Madrid and the Protocol system offers the possibilityto record a trademark in 78 countries at once.

However, owners has to go through their own national

office to present their request to WIPO

WIPO HAS MADE POSSIBLE A FREE SEARCH ON-

LINE OF ³ROMARIN´ ±

INFORMATION ON TRADEMARKS RECORDED AT WIPO.

http://www.wipo.int/madrid/en/services/

MANY REGISTRIES FOR SEARCH ARE AVAILABLE IN THE

PRIVATE SECTOR OR VIATHE IP OFFICES, COUNTRY BY

COUNTRY.

Madrid System for the

International Registration of Marks



Protecting a TM


� It is critical to register your trademark in allclasses in which you use or intend to use your

trademark.� The most widely used classification system

(Nice has 34 classes for goods and 11 forservices.

� Some TM offices such as in US and Canada

require the proof that the TM is used withina year.

�



Protecting a TM


� A substantive examination may be required if there is a conflict with an existing Mark onthe register.

� Some countries publish the TM in a journalallowing 3rd parties to oppose during a givenperiod.

� Once it is decided that there is no grounds for

refusal, a certificate is issued which is validfor 10 years.

� Registration can be renewed indefinitely butmay be cancelled if TM is not actively usedfor a certain period stated in the TM law.

�



SCOPE OF RIGHTS

� THE EXCLUSIVE RIGHT TO USE THE MARK

� THE RIGHT TO PREVENT OTHERS FROM USING AN

IDENTICAL OR SIMILAR MARK FOR IDENTICAL OR

SIMILAR GOODS OR SERVICES

� THE RIGHT TO PREVENT OTHERS FORM USING AN

IDENTICAL OR SIMILAR MARK FOR DISSIMILAR

GOODS OR SERVICES



KEEP IN MIND

� THE TIME IT TAKES TO REGISTER A TM

� THE COSTS ASSOCIATED WITH TM PROTECTION

� THE NEED FOR A TRADEMARK SEARCH - FREE AT

WIPO

� A TRADEMARK AGENT MAY BE REQUIRED

� PROTECTING AT HOME AND ABROAD

� RENEWINGYOUR REGISTRATION & PAYING FEES



PROTECTING AT HOME

AND ABROAD� THE NATIONAL ROUTE

± Each country where you seek protection

� THE REGIONAL ROUTE (for some countries only)

± Countries members of a regional trademark system:African Regional Industrial Property Office; ASEAN IPO;

Benelux TM office; Office for Harmonization of the Internal

Market of the EU; Organisation Africaine de la Propriété

Intellectuelle

� THE INTERNATIONAL ROUTE

� UK JOINED THE MADRID PROTOCOLE IN DECEMBER

2005 - ISRAEL MAY JOIN VER Y SOON

± The Protocol & Madrid system administered by WIPO

± 78 member countries



USING A TRADEMARK

� ACTIVELY USING A TM

� USING/MAINTAINING A TM IN MARKETING AND

ADVERTISING

� USING THE MARK ON THE INTERNET

� USING THE MARK AS A BUSINESS ASSET



ACTIVELY USING A

TRADEMARK

� OFFERING THE GOODS OR SERVICES

� AFFIXING THE MARK TO THE GOODS OR THEIR

PACKAGING

� IMPORTING OR EXPORTING THE GOODS UNDER THE

MARK

� USING IT ON BUSINESS PAPERS OR IN ADVERTISING



USING A TRADEMARK IN

ADVERTISING� USE EXACTLY AS REGISTERED

� Protect TM from becoming generic

± Set apart from surrounding text

± Specify font, size, placement and colors

± Use as an adjective not as noun or verb

± Not plural, possessive or abbreviated form

± Use a trademark notice in advertising and labeling ®

� MONITOR AUTHORIZED USERS OF THE MARK

� REVIEW PORTFOLIO OF TRADEMARKS

� AN EVOLVING TRADEMARK



USING A TM ON THE

INTERNET

� USE OF TM ON INTERNET MAY RAISE

CONTROVERSIAL LEGAL PROBLEMS

� CONFLICT BETWEEN TRADEMARKS AND DOMAIN

NAMES (INTERNET ADDRESSES) - CYBER SQUATTING

� WIPO PROCEDURE FOR DOMAIN NAME DISPUTE

(HTTP://ARBITER.WIPO.INT.DOMAINS)



USING A TRADEMARK AS

A BUSINESS ASSET

� LICENSING: OWNER RETAINS OWNERSHIP AND

AGREES TO THE USE OF THE TM BY OTHER COMPANY

IN EXCHANGE FOR ROYALTIES > LIC ENS I N G

AGR EEMENT (BUSINESS

EXPANSION/DIVERSIFICATION)

� FRANCHISING: LICENSING OF A TM CENTRAL TO

FRANCHISING AGREEMENT.THE FRANCHISER

ALLOWS FRANCHISEE TO USE HIS WAY OF DOING

BUSINESS (TM, KNOW-HOW, CUSTOMER SERVICE, S/W,

SHOP DECORATION. ETC)

� SELLING/ASSIGNING TM TO ANOTHER COMPANY

(MERGER & ACQUISITIONS/RAISING OF CASH)



ENFORCING

TRADEMARKS

� RESPONSIBILITY OF TM OWNER TO IDENTIFY

INFRINGEMENT AND DECIDE ON MEASURES

� ³ CEASE AND DESIST LETTER´ TO ALLEGEDINFRINGER

� WIPO ENFORCEMENT PROGRAMS -

� COOPERATION WITH CUSTOMS AUTHORITIES TO

PREVENT COUNTERFEIT TRADEMARK GOODS

� ARBITRATION AND MEDIATION (PRESERVE BUSINESS

RELATIONS)



SMES GUIDE FOR

TRADEMARKS



THANK YOU FOR

YOUR ATTENTION

(end of part I)

www.wipo.int/sme/enSUSCRIBE TO OUR NEWSLETTER ON-LINE

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