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ORIENTATION PROGRAM ON INTELLECTUAL PROPERTY FOR MANAGEMENT STUDENTS OF INDIAN INSTITUTE OF MANAGEME

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The Role of Trademarks and Geographical Indications. Lien ... Italian skiwear and sportswear company. Napapijri means Artic Polar Circle in Finnish Language. ... – PowerPoint PPT presentation

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Title: ORIENTATION PROGRAM ON INTELLECTUAL PROPERTY FOR MANAGEMENT STUDENTS OF INDIAN INSTITUTE OF MANAGEME


1
ORIENTATION PROGRAM ON INTELLECTUAL PROPERTY
FOR MANAGEMENT STUDENTS OF INDIAN INSTITUTE OF
MANAGEMENT (IIPM) Geneva, Switzerland, 2006
2
Marketing and Branding Strategies The Role of
Trademarks and Geographical Indications
  • Lien Koglin Verbauwhede
  • Consultant, SMEs Division
  • World Intellectual Property Organization (WIPO)

3
1. Marketing and Branding
4
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

5
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

6
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

7
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 customers mind

8
(No Transcript)
9
The Nikes case
  • Reflects the popularity of a well-known TM
  • The Swoosh is the well known symbol of Nike
  • Originally Nikes logo included also the
    shoemakers name
  • At the end of the nineties, the Nikes 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

10
The Swoosh
11
  • Trademarks
  • Industrial Designs
  • Geographical Indications

3 IP Rights crucial to successful branding
12
2. Trademarks
13
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?
14
  • 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)

15
Any Distinctive Words, Letters, Numerals,
Pictures, Shapes, Colors, Logotypes, Labels or
Combinations
16
Less Traditional Forms
  • Single colors
  • Three-dimensional signs (shapes of products or
    packaging)
  • Audible signs (sounds)
  • Olfactory signs (smells)

17
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)

18
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

19
Practical aspects
  • Selecting a trademark
  • Protecting a trademark through registration
  • Using and maintaining a trademark
  • Enforcing a trademark

20
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

21
The Napapijris 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.

22
Napapijri
23
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

24
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

25
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

26
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

27
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)

28
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

29
IP and Marketing
Trademarks
  • Collective marks
  • Certification marks
  • GIs

Individual marketing
Joint marketing
30
3. Collective Trademarks
31
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

32
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

33
  • 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

34
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

35
  • 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

36
  • Example Interflora
  • To buy, order and send flowers at almost anywhere
    in the world
  • gt 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

37
4. Certification Marks
38
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

39
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

40
Benefits for SMEs
  • Guarantee for consumers of certain quality
  • Benefit from the confidence that consumers place
    in users of certification mark
  • Strengthen reputation

41
  • 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

42
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

43
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

44
5. Geographical Indications
45
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

46
  • Most commonly, consists of the name of the place
    of origin of the goods
  • Country, region, city
  • E.g. Champagne (France), Nuoc Mam (Vietnam)
  • In some countries can also be figurative
    element
  • E.g. Eiffel tower, Egyptian pyramid
  • E.g. birds, animals associated with a place

47
How does a GI work?
  • 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
  • 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)

48
  • 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

49
  • 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

50
  • 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

51
Example Talavera de Puebla
  • 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

52
How is a GI protected?
  • National
  • Regional
  • International

53
  • 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

54
  • Protection on international level
  • No legally binding international register for all
    GIs
  • Bilateral agreements
  • e.g. EU-Bulgaria for wine names
  • International treaties

55
  • 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

56
Benefits for SMEs
  • 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

57
Disadvantages
  • 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)

58
Thank You
  • e-mail lien.verbauwhede_at_wipo.int
  • http//www.wipo.int/sme/
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