The Relevance of Trade Marks for the Textile Sector

WIPO National Seminar on IP for SMEs in the Textile Industry

DamascusOctober 13 and 14, 2010

Mrs. Lien Verbauwhede Koglin

Consultant, SMEs Division, WIPO

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

This Presentation

Question 1Question 1

WHAT IS BRANDING ?WHAT IS BRANDING ?

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.

What is a Brand ?

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

Importance of Branding for Textile Industry

Firms without any distinct features, without a clear vision or specific mission, or without permanent values, will sink in the mass

Target what customers care about: articulate precise values and qualities that are relevant and of direct interest (E.g., China)

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

What to do for a Sucessful Branding Strategy?

Chloe Marcie bag

Trademark: Legal concept

Brand: Marketing concept

Brand profile and positioning may vary over time, but trademark protection will remain the same

A Brand – A Trademark

Question 2Question 2

WHAT IS A TRADE MARK ?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

Renewable indefinitely !

Registration is required in most countries (exception: well-known trademarks)

After P,all they have...

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 3Question 3

WHAT RIGHTS DOES TRADEMARK WHAT RIGHTS DOES TRADEMARK REGISTRATION PROVIDE ?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; orusing 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 4Question 4

HOW TO SELECT A SUCCESSFUL HOW TO SELECT A SUCCESSFUL TRADE MARK ?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 featuresshape 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 rightsSyria - 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

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 perfor-

mance 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 SmartStart Project of Australian IP Office

From http://www.ahiida.com/

Case study: Burqini

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 5Question 5

HOW TO REGISTER YOUR TRADE HOW TO REGISTER YOUR TRADE MARK?MARK?

Three Ways to Register

The National Route

The Regional RouteAfrican Regional Industrial Property Office (ARIPO) for English-speaking 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); andOrganisation Africaine de la Propriété Intellectuelle (OAPI) for protection in French-speaking African countries (www.oapi.wipo.int).

The International RouteMadrid 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 6Question 6

HOW TO ENFORCE YOUR TRADE HOW TO ENFORCE YOUR TRADE MARK?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 7Question 7

HOW TO DO BUSINESS WITH HOW TO DO BUSINESS WITH TRADE MARKS ?TRADE MARKS ?

THE RELEVANCE OF THE RELEVANCE OF TRADE MARKS FOR THE TRADE MARKS FOR THE TEXTILE SECTORTEXTILE SECTOR

CONCLUSIONSCONCLUSIONS

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.

Thank You!

lien.verbauwhede@wipo.int

www.wipo.int/sme

The Importance of Proper Management of Trade Secrets