SMEs Division

Branding and Marketing- Role of Trademarks and Geographical Indications -

May 2007, Geneva

Won-Kil YOONCounsellor, SMEs Division

World Intellectual Property Organization (WIPO)

SMEs Division

1.

Branding & Marketing

SMEs Division

SMEs Division

Why does a brand matter?“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.”

SMEs Division

What is Branding?

• Making company image as seen by the customer

• Good branding : getting people to recognize your product as the best in the market

• Brand : what differentiates you mostly from your competitors in the market

- Co-branding : useful for entering new markets (ex. LG-Phillips)

- Multibranding : useful for attracting various consumers ex.) For core premium customer : Nike brand For discount shoppers : Starter brand For “lifestyle” consumers : Converse Sneaker brand

- Co-branding : useful for entering new markets (ex. LG-Phillips)

- Multibranding : useful for attracting various consumers ex.) For core premium customer : Nike brand For discount shoppers : Starter brand For “lifestyle” consumers : Converse Sneaker brand

SMEs Division

Guiding Principles to make a Good Brand

Able to be protected as a trademark

Easy to read, write and remember

Acceptable in major overseas markets

The best brand The best brand for your businessfor your business

Able to be registered as domain name

SMEs Division

Best Global Brands

14%30,131 Telecom Equipment6. Nokia

12%27,941 Automotive7. Toyota

-9%32,319 Computer Hardware5. Intel

5%27,848 Media/Entertainment8. Disney

Diversified

Computer Services

Computer Software

Beverages

Sector Change in Brand Value2006 Value ($m)Brand

48,907

56,201

56,926

67,000

4%

5%

-5%

-1%

4. GE

3. IBM

2. Microsoft

1. Coca-Cola

(Best Global Brands 2006, Interbrand, www.interbrand.com)

SMEs Division

2.

Trademarks

SMEs Division

“A sign capable of distinguishing the goods or services produced or provided

by one enterprise from those of other enterprises”

What is a Trademark?

SMEs Division

Any Distinctive Words, Letters, Numerals, Pictures, Shapes, Colors, Logotypes, Labels or Combinations

SMEs Division

Some Concepts of Trademarks

very famous in the market and

as a result benefit from stronger protection

to distinguish goods or services certified

by a certifying authority

to distinguish goods or services by

members of an association

to distinguish services

to distinguish goods

Well-known mark

Certification mark

Collective mark

Service mark

Trade mark

SMEs Division

SMEs Division

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

SMEs Division

What to avoid when selecting a trademark

• Generic: CHAIR to sell chairs

• Descriptive: SWEET to sell chocolates

• Deceptive: “ORWOOLA” for 100% synthetic material

• Marks contrary to public order/morality

SMEs Division

Less Traditional Forms

• Single colors

• 3-D signs (shapes of products/packaging)

• Audible signs (sounds)

• Olfactory signs (smells)

SMEs Division

Application: single color?

• In principle, single color is considered as not distinctive• Exceptionally, if it gets secondary meaning it may receive

TM protection

* secondary meaning : acquired strong distinctiveness through use• However, colors are in limited supply …

- allowing companies to appropriate colors will soon lead to the "depletion" of all attractive colors in each product line

- preventing use of color would put competitors at a significant disadvantage

functionality test

SMEs Division

Single color?

Blue Frozen Desserts (Ambrit v. Kraft)

US Courts •Royal blue is a “cool

color”. It is suggestive of coldness and used by a

multitude of ice cream and frozen dessert producers

•Royal blue when used to package frozen desserts is functional and can not be

monopolized in a trademark

SMEs Division

• Lego: Patent expired in 1988 - competitors (Tyko, Mega Bloks,

COKO): identical "legos" that are interchangeable and compatible with Lego system

• The Lego brand is all they have left …

• Tried 3-dim Mark

Canadian court + OHIM:

No TM rights in purely functional elements of a product.

If LEGO is unable to rely upon patent protection for those utilitarian features, then those features are available for all to use.

?

Application: 3D trademark?

SMEs Division

Ways to Use Trademarks as Business Assets

• Marketing tool

• Source of revenue through licensing

• Crucial component of franchising agreements

• May be useful for obtaining finance

• Sale of TM itself

SMEs Division

Registering a Trademark – Step by Step

5. Registration & Renewal

1. Making a Mark & Trademark Search

2. Application

3. Formality Check & Examination

4. Publication & Opposition

SMEs Division

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

– if well-known: also for goods or services of different kind

SMEs Division

3 Ways for International Application3 Ways for International Application

- Application to

countries

in the required

language

- Priority right of 6

months under

Paris Convention

The National Route

- Application to

regional trademark

offices

- The African

Regional Industrial

Property Office,

OHIM for the EU,

etc.

The Regional Route The Madrid Route

- Application to the

countries of

Union or WIPO

- One international

application,

in one language,

subject to

one set of fees

and deadlines

SMEs Division

3.

Geographical Indications

SMEs Division

What is a Geographical Indicaton?

• 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

SMEs Division

• Mostly: name of place of origin• Country, region, city

• E.g. Champagne (France)

Matterhorn, Switzerland

Eiffel Tower,Paris

Tower Bridge,London

• Some countries: also figurative element• E.g. Eiffel tower, Egyptian pyramid

SMEs Division

• Basically, each enterprise located in the area has right to use GI freely

For some products, – Subject to certain quality requirements, only authorized persons may use the GI

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)

SMEs Division

• Unauthorized persons should not use GIs since it could mislead public as to 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

SMEs Division

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

SMEs Division

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

SMEs Division

National legislation to protect Geographical Indications

– Special system for protection• Registration with IP office (Russia, Slovenia)• 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, UC, Consumer Protection• If reputation + misleading • Pass off: e.g. Scotch whisky – Peter Scot in India• Cons prot: e.g. ‘made in Japan’; Egyptian cotton

SMEs Division

Protection on international level

– No legally binding international register for all GIs

– Bilateral agreements • e.g. EU-Bulgaria for wine names

– International treaties

SMEs Division

- 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

SMEs Division

• Collective branding and marketing– For good reputation, GIs shift focus of production to

quality increased production and 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

SMEs Division

Won-Kil YOON

yoon@wipo.int

Tel)+41-22-338-8159

Fax)+41-22-338-8760

WIPO SMEs Web-Site

“www.wipo.int/sme”

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