Presentation on theme: "The Relevance of Trade Marks for the Textile Sector WIPO National Seminar on IP for SMEs in the Textile Industry Damascus October 13 and 14, 2010 Mrs."— Presentation transcript:
The Relevance of Trade Marks for the Textile Sector WIPO National Seminar on IP for SMEs in the Textile Industry Damascus October 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 1 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 customers 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 2 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 3 WHAT RIGHTS DOES TRADEMARK 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; or using 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 4 HOW TO SELECT A SUCCESSFUL 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 features shape 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 rights Syria - 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 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 5 HOW TO REGISTER YOUR TRADE MARK?
Three Ways to Register The National Route The Regional Route African 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); andwww.oami.europa.eu Organisation Africaine de la Propriété Intellectuelle (OAPI) for protection in French-speaking African countries (www.oapi.wipo.int).www.oapi.wipo.int The International Route Madrid 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:
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 6 HOW TO ENFORCE YOUR TRADE 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, 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 7 HOW TO DO BUSINESS WITH TRADE MARKS ?
THE RELEVANCE OF TRADE MARKS FOR THE TEXTILE SECTOR CONCLUSIONS
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. Dont 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! The Importance of Proper Management of Trade Secrets