The Small and Medium-Sized Enterprises (SMEs) Division of WIPO ORIENTATION PROGRAM ON INTELLECTUAL PROPERTY FOR MANAGEMENT STUDENTS OF INDIAN INSTITUTE OF MANAGEMENT (IIPM) Geneva, Switzerland, 2006

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO Marketing and Branding Strategies: The Role of Trademarks and Geographical Indications Lien Koglin Verbauwhede Consultant, SMEs Division World Intellectual Property Organization (WIPO)

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 1. Marketing and Branding

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO The Swoosh

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO Trademarks Industrial Designs Geographical Indications 3 IP Rights crucial to successful branding

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 2. Trademarks

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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?

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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)

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO Any Distinctive Words, Letters, Numerals, Pictures, Shapes, Colors, Logotypes, Labels or Combinations

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO Less Traditional Forms Single colors Three-dimensional signs (shapes of products or packaging) Audible signs (sounds) Olfactory signs (smells)

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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)

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO Practical aspects Selecting a trademark Protecting a trademark through registration Using and maintaining a trademark Enforcing a trademark

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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.

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO Napapijri

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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)

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO IP and Marketing Collective marks Certification marks GIs Trademarks Individual marketing Joint marketing

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 3. Collective Trademarks

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO Example: Interflora To buy, order and send flowers at almost anywhere in the world > 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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 4. Certification Marks

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO Benefits for SMEs Guarantee for consumers of certain quality Benefit from the confidence that consumers place in users of certification mark Strengthen reputation

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 5. Geographical Indications

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO Most commonly, consists of the name of the place of origin of the goods Country, region, city E.g. Champagne (France), Nuoc Mam (Vietnam) Matterhorn, Switzerland Eiffel Tower, Paris Tower Bridge, London In some countries : can also be figurative element E.g. Eiffel tower, Egyptian pyramid E.g. birds, animals associated with a place

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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 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)

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO -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 Example: Talavera de Puebla

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO National Regional International How is a GI protected?

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO Protection on international level –No legally binding international register for all GIs –Bilateral agreements e.g. EU-Bulgaria for wine names –International treaties

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO –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

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO 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 Benefits for SMEs

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO –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) Disadvantages

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO Thank You