THE ROLE OF TRADEMARKS IN BRANDING

THE ROLE OF TRADEMARKS IN BRANDING
WIPO Training of Trainers Program on effective use of intellectual property assets management by SMEs Dar Es Salaam 22 August 2011 Marina Sauzet SMEs Division

INTRODUCTION These are TRADEMARKS AND BRANDING ISSUES…..
How do you communicate with your customers? How do you get people recognize your name? How do you build trust with your customers? What is your Unique Selling Proposition for claiming a premium price for your products? How do you differentiate your products from those of the competition? How will prevent others from using your distinctive signs? These are TRADEMARKS AND BRANDING ISSUES…..

OUTLINE Basics of Trademarks Brands versus Trademarks
Concept of Branding Setting a branding strategy Trademarks management in Branding WIPO branding initatives in Tanzania

BASICS OF TRADEMARKS Every day a new product enters the market…

BASICS OF TRADEMARKS TRADE MARK SIGN TRADE ORIGIN MANUFACTURER
DEFINITION In common usage, a ‘trademark’ is often referred to as a ‘brand.’ TRADE MARK A mark used to indicate a connection in the course of trade with the goods of a particular manufacturer (for the purposes of identifying the trade origin) The consumer identifies ,recognizes and demand the goods of a particular manufacturer with reference to the trademark applied to such goods. The Trade Mark is owned and possessed by an individual as a proprietor. The individual could be a firm, a corporate, a society or a partnership firm and has the exclusive right to its use and exploitation. TRADE ORIGIN MANUFACTURER SIGN

BASICS OF TRADEMARKS DEFINITION
A sign capable of identifying and distinguishing in the marketplace the products of one enterprise from those of other enterprises. The term “products” encompasses both goods and services. Different from trade name: company business registration: A trade name cannot be registered as a trademark unless it also functions as a trademark. E.g., Apple Computer, Inc. owns Apple® computers A trademark, or simply a mark, is a sign capable of identifying and distinguishing in the marketplace the products of one enterprise from those of other enterprises. The terms “trademark” and “mark” are often used for all types of marks, and are used interchangeably in this guide. The term “products” encompasses both goods and services.

BASICS OF TRADEMARKS TRADITIONAL
Words, Phrases, Letters, Numerals, Pictures, Colors, Drawings, Label The word APPLE is a registered mark of Apple Computer. The slogan JUST DO IT is used as a trademark of Nike. The name GIORGIO ARMANI is a registered mark. The shape of the COCA-COLA bottle is a registered trademark. The device of the MCDONALD’S arches and the sound of the YAHOO! yodel are also registered trademarks. Even the roar of the MGM lion is used as a trademark.

BASICS OF TRADEMARKS NON- TRADITIONAL
Single colors, Three-dimensional signs, Sounds, Smells, Tactile marks, Gesture The word APPLE is a registered mark of Apple Computer. The slogan JUST DO IT is used as a trademark of Nike. The name GIORGIO ARMANI is a registered mark. The shape of the COCA-COLA bottle is a registered trademark. The device of the MCDONALD’S arches and the sound of the YAHOO! yodel are also registered trademarks. Even the roar of the MGM lion is used as a trademark.

BASICS OF TRADEMARKS 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 Certification marks Well-known marks: benefit from stronger protection Trade name vs. Trade mark

BASICS OF TRADEMARKS FUNCTIONS OF A TRADEMARK
Allows companies to differentiate their products Indicator of origin Product differentiation function Ensures consumers can distinguish between products and ultimately develop brand loyalty/Trust Symbols of quality Goodwill Trademarks play a pivotal role in the branding and marketing strategies of companies. TM in fact contribute to defining the image and reputation of a company’s product in the eyes of a consumer. Why should you register a trademark? Indicators of origin. Historically one of the earliest use of trademarks was by members of trade associations or guilds for the purposes of identifying the person responsible for making them. Still recognized as an indicator of source. Goodwill An intangible value attributed to a business which enables a business to continue to earn a profit. The value of the loyalty of the firm's customers, trademark required to enable association in the consumer's mind with a particular entity. Product differentiation function The more distinctive the mark, the more effective the selling power. Has the power of distinguishing goods, hence reducing searching costs of consumers. Symbols of quality Consumers are assured that each product or service symbolized by a particular trademark is the same quality as other goods and services of the mark owner. Investment or advertising power The more distinctive the mark, the more effective the selling power (branding)

® ™ BASICS OF TRADEMARKS PROTECTION
Registration is key and is territorial Provides coverage in relevant markets where registered Provides stronger protection in case a dispute . Exclusive rights prevent others from marketing products under same or confusingly similar mark Promotes customer loyalty/ reputation / image of company The right to prevent others from using the name for internet domain name registration purpose Registration gives the right to authorize the use by others (license or franchising agreements) Secures investment in marketing effort ™ Why to protect? Registration is the only way to establish rights in a mark. The owner of a registered mark is entitled to a presumption of mark ownership and exclusive use from the filing date of the application. A mark is protected by its registration as a mark under the relevant trademark law or, in some countries, also through its use as a mark in the marketplace. Even where a mark is protected through use, it is advisable to register it as a mark as such registration provides stronger protection in case a dispute concerning a mark requires intervention of other persons or a court of law. A trademark confers on its proprietor an exclusive right therein. The proprietor is entitled to prevent all third parties, who do not have his consent, from using the same or similar signs, in the course of trade, for identical or related goods and/or services as those protected by the trademark. A registered trademark can be a valuable asset if you decide to sell your business. You can transfer or licence your trademark rights against payment. Registered trademarks are protected for the complete national territory, regardless of the actual geographic use made of the mark. Registration of your mark may also prevent others from using that mark as an Internet domain name. Protection can extend to Trademark Dilution – which may occur even without a likelihood of confusion; when there is a lessening of the capacity of a famousmark to identify and distinguish goods or services.

BASICS OF TRADEMARKS PROTECTION
National route: IP Office in each country. Regional route: Countries members of a regional trademark system: African Regional Industrial Property Office (ARIPO); Benelux TM office; Office for Harmonization of the Internal Market of the EU (OHIM); Organisation Africaine de la Propriété Intellectuelle (OAPI). The international route: the Madrid system administered by WIPO (over 70 member countries) Where to protect? The trademark office: Formal examination, Substantive examination, Publication and opposition, Registration certificate valid for 10 years, Renewal The Madrid system for the international registration of marks (the Madrid system) established in 1891 functions under the Madrid Agreement (1891), and the Madrid Protocol (1989). It is administered by the International Bureau of WIPO located in Geneva, Switzerland. Thanks to the international procedural mechanism, the Madrid system offers a trademark owner the possibility to have his trademark protected in several countries by simply filing one application directly with his own national or regional trademark office (members of the Madrid Union available in PDF). An international mark so registered is equivalent to an application or a registration of the same mark effected directly in each of the countries designated by the applicant. If the trademark office of a designated country does not refuse protection within a specified period, the protection of the mark is the same as if it had been registered by that Office. The Madrid system also simplifies greatly the subsequent management of the mark, since it is possible to record subsequent changes or to renew the registration through a single procedural step. Further countries may be designated subsequently.

BASICS OF TRADEMARKS Not Protectable Very Protectable
REQUIREMENT FOR REGISTRATION DISTINCTIVENESS IS KEY Not Protectable An arbitrary trademark is a word that exists but has no meaning when used on the product itself, while a fanciful trademark is a word without a dictionary meaning. A descriptive trademark directly conveys information regarding an ingredient, quality, characteristic, function, feature, purpose or use of the product. Suggestive marks indirectly refer to the goods or services with which they are associated. Generic terms or common words for the products cannot function as a trademark because it would prevent others from rightfully using the common name for the product that they make. Very Protectable

BASICS OF TRADEMARKS DURATION
Initial registration generally valid for 10 years. May be renewed indefinitely provided renewal fee is paid in time. Can continue indefinitely, as long as the mark is neither abandoned by the trademark owner, nor loses its distinctiveness the marketplace as a trademark by becoming a generic term

BRANDS VERSUS TRADEMARKS
BRANDS: THE « POWER » OF A NAME In 'blind' taste tests, people prefer the taste of Pepsi over the taste of Coke. However, if the test is not 'blind' and the tasters know which beverage is which, they prefer the taste of Coke over Pepsi! The Coca-Cola brand has the power to actually change an individual's taste! That is the emotional power of a name. Can you associate five brands with an adjective ?

RELATIONSHIP BETWEEN BRAND AND TRADEMARK … The term ‘brand name’ is often used interchangeably with “brand”, BUT … … it is more correctly used to specifically denote written or spoken linguistic elements of a brand. …. In this context a “brand name” constitutes a type of trademark, if the brand name exclusively identifies the brand owner as the commercial source of products or services. …. A brand owner may seek to protect proprietary rights in relation to a brand name through trademark registration.

What is a brand? 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 is the set of perceptions and expectations created among key stakeholders: Consumers Business partners (distributors, suppliers…) employees …. for the future performance of your company A brand is a promise and its reputation depends entirely on how well that promise is kept For most small and medium-sized enterprises (SMEs), marketing products or services is a major challenge. A marketing strategy should establish a clear link between your products or services and your SME, as the producer or provider of such products or services. That is to say, customers should be able to distinguish, at a glance, between your products or services and those of your competitors and associate them with certain desired qualities. Marina Sauzet , WIPO 18 18

A brand represents the holistic sum of all information about a product or group of products. It is a symbolic construct which typically consists of a name; identifying mark; logo; visual images or symbols; or mental concepts Michelin without Mr. Bibendum and Mac Donald without golden arches

VALUE OF Brands A valuable business asset Brands that keep their promise, attract loyal customers and cash… The value of brands in businesses of owning strong branss is inconstestable.

Let’s see how your business may benefit from a brand strategy to develop brand preference, brand loyalty, and brand equity. Recognition and Brand Loyalty: Over time, a consistent good experience with a product translates into brand preference. This helps to keep alive a business’s positive image in the minds of its consumers. If consumers are happy with its products, they will develop trust in its brand and may become, over time, loyal consumers for all its products Image of Quality: Many consumers buy a brand and not the product to which it relates. when a consumer comes across two otherwise identical products in the market, his choice will invariably move to the branded product of a business that promises a higher quality. This would keep or further enhance the brand’s leading position in the relevant markets. Image of Size: A strong brand may project the image of a large and established business to its consumers. So, when a business succeeds in creating a positive brand image and brand preference among consumers, the business appears to be much bigger than it really is. Image of Experience and Reliability: When experience with a brand indicates that the business owning it has, over time, consciously used its resources to implement a coherent business strategy, it reassures the consumers that such a business is, and will remain, a more reliable and trustworthy business than the others

Trademark= Legal concept. Intellectual Property Right Registration of a trademark will add value to your business as it protects its other inherent assets. Brand = Marketing concept. Holistic sum of information concerning a product (name, color, emotion) Brand profile and positioning may vary over time, but trademark protection will remain the same. The term ‘brand name’ is often used interchangeably with “brand”, BUT … it is more correctly used to specifically denote written or spoken linguistic elements of a brand. In this context a “brand name” constitutes a type of Trademark, if the brand name exclusively identifies the brand owner as the commercial source of products or services. A brand owner may seek to protect proprietary rights in relation to a brand name through trademark registration. Registration of a trademark will add value to your business as it protects its other inherent assets; Brand profile and positioning may vary over time, but trademark protection will remain the same.

Use of the Trademarks as Business Assets Licensing: owner retains ownership and agrees to the use of the TM by other company in exchange for royalties > licensing agreement (business expansion/diversification); Franchising: licensing of a TM central to franchising agreement. The franchiser allows franchisee to use his way of doing business (TM, know-how, customer service, etc.); Selling/assigning TM to another company (merger & acquisitions/raising of cash).

CONCEPT OF BRANDING DEFINITION OF « BRANDING » ‘Fahari ya Mwanamke’
Branding is an effort to give a unique identity to the company’s products and create emotional associations with consumers. The intangible, but real, value of words, graphics or symbols that are associated with the products or services offered by a business A brand is a promise. A promise to achieve certain results, deliver a certain experience, or act in a certain way. A promise that is conveyed by everything people see, hear, touch, taste or smell about your business. A brand represents the holistic sum of all information about a product or group of products. It is a symbolic construct which typically consists of a name; identifying mark; logo; visual images or symbols; or mental concepts. A brand is a set of associations that reside in the memory of customers and are linked to a product range, a division, or company. ‘Fahari ya Mwanamke’

CONCEPT BRANDING PURPOSE OF « BRANDING »
Gives your business a significant edge over the competition; Makes the customer view your business as the only solution to their need or problem A strong brand will engender feelings of trust, reliability, loyalty and recognition in the customer’s mind; Through its brand image, a business will attract and retain customer loyalty for its goods and services and increase the value of its business.

CONCEPT OF BRANDING PURPOSES OF BRANDING
Communication and differentiation purposes: A positive image or reputation creates a relationship of trust. The trust = a loyal clientele and enhancing a business's goodwill in the long term. Satisfied consumers develop emotional attachment to a mark. They perceive products/businesses bearing the mark as sharing a brand identity or image, which reflects a set of desired attributes, benefits or values… «Give to the man in the street a better deal

CONCEPT OF BRANDING PURPOSES OF BRANDING
Communication and differentiation purposes: The brand also define cultural image, personality and type of consumers linked to the product sold under the mark/ brand.

CONCEPT BRANDING Trademarks and industrial designs increase the power of Marketing

SETTING A BRANDING STRATEGY
Brand Audit Associate your brand with a key customer promise Assess the customers’ perceived consideration set of alternatives and the brand’s advantages and disadvantages within that set. Target the right customers and prospects that offer the greatest potential for increased revenue and profitability. Developing a branding strategy must be a part of the business plan

Brand Strategy Differentiate the brand: emphasize features that are both important to consumer and quite differentiated from competitors; Know your customers needs and wants and how the brand will respond to those needs and wants. Define the brand vision, brand positioning, and brand personality and brand measurement Brand positioning: A brand positioning statement describes how the brand will communicate with a specific target group to create a sustainable competitive advantage. Brand Personality: Brand personality describes how a brand behaves --- what it does and how it does it – so that the brand always acts consistent with its values. Brand personality enhances target appeal and provide further differentiation.

Brand Execution Select a brand name and visual elements. What will be the brand name; the brand logos and Icons (colors, music, symbols)? Legal requirements Language requirements the brand : easy to read, spell, remember, retrieve, and is suitable for all types of advertising media. Trademark search: not identical or confusingly similar to existing marks in the relevant category of products. ) Connotation: no undesirable or negative connotations in any of the relevant languages in the selected markets. Domain name: confirm availability of corresponding domain name (i.e., Internet address). Basic rules for selecting a mark: While there are no hard and fast rules for creating or selecting a word to be used as a mark, the following five-point checklist is a useful way to start. Legal requirements: Verify whether the proposed mark meets all the absolute grounds or legal requirements for registration as a mark. Language requirements: Make sure a proposed word mark is easy to read, spell, remember, retrieve, and is suitable for all types of advertising media. It should not be generic, laudatory or descriptive of the product in relation to which it is to be used. Trademark search: Do a trademark search to make sure that it is not identical or confusingly similar to existing marks in the relevant category of products. It is generally advisable to do this for at least three different proposed marks. This includes searching all the relevant trademark databases; searching dictionaries for similar looking or sounding words in all the relevant languages; and looking at marks in use in the relevant markets, including well-known marks. Connotations: Make sure the proposed marks do not have any undesirable or negative connotations in any of the relevant languages in the domestic or export markets. Domain name:

Brand Execution Branding associations What association will be made with the brand (celebrities, images…) What slogan and jingles will be associated with the brand? What brand alliances and association could be made? With whom? Sponsorship? Co-branding? Event marketing? Celebrity endorsement? What community networks will be used?

Brand Execution: Define Branding strategies Multy branding strategy Family brand strategy Co- Branding Multy branding strategy: Marketing of two or more similar and competing products by the same company under different and unrelated brands Family brand strategy: A family brand is a brand which is used on a group od products of a given company. A family brand nay be the corporate brand or there may be a number of family brands under a corporate brand. Nike and Apple brought music and exercise together when they developed the Sports Kit, a wireless system that allows shoes to talk to an iPod.

Brand Execution: Define Branding strategies Line extension strategy Enter a new market segment in the same product class. Coca Zero, Coca Diet Brand extension strategy Enter a completely different product class. Line extension strategy An established brand name is used to enter a new market segment in the same product class. A new variation of a product or service sharing the same essential characteristics as the parent, but offering a new benefit, such as flavor, size, package type, etc. Brand extension strategy Established brand name is used to enter a completely different product class. A new product or service that is related to an existing brand, but that offers a different benefit and/or appeals to a different target segment

Brand Execution Sell the brand outside and inside: Motivate employees to identify with brand; Communicate the brand image at all levels of operation Keep brand flexible

Brand Execution Register your Intellectual Property Rights (IPRs) that are part of your branding strategy especially trademarks and industrial designs. Especially the intangible assets that are part of your : Visual identity: logotypes, symbols, colors, typefaces. Verbal identity: name, naming system for products, sub-brands and groups.

EFFECTIVE BRANDING INCLUDES : The Functional Dimension: user friendly technology and design The Mental Dimension: Connecting people The Spiritual Dimension : bridging the technology gap The Social Dimension: Nokia social groups The Functional Dimension: perceived benefits of product or service The Mental Dimension : the ability to create insight or guidance for the individual The Spiritual Dimension: perception of responsibility in the industry, society, locally or globally The Social Dimension: ability to create a social context for a group

KEEP IN MIND! Brand Name-name, tagline, logo Brand Position-description of your organization Brand Promise-The single most important thing your organization promises to deliver every time Brand Personality-what you want your brand to be known for (fun, serious, magical, forceful, imaginative, etc.) Brand Tone-edgy, humorous, conservative, subtle Brand Story-Your organizational history and how it adds value to the brand, highlights how your products and services grew from that background and how your methodology impacts what you offer Brand Associations-colors, taglines, images, fonts, uniforms, signage, equipment, etc.

TRADE MARK MANAGEMENT IN BRANDING
LIFE CYCLE OF A BRAND Brand recognition Customers know your name but don’t prefer it over competition Brand preference Customers pick your product based on a previous experience with it Brand insistance Customers won’t accept another product (monopoly status) Generification Customers associate your brand with the category of the product. You are « cannibalized » by your own success BRAND RECOGNITION- They know your name but don’t prefer it over competition. BRAND PREFERENCE- They pick your brand based on previous experience with it. BRAND INSISTANCE- Won’ accept alternatives eq. monopoly status. GENERIFICATION your brand becomes synonymous with the category . You may be cannibalized by your own success

LIFE CYCLE OF A BRAND Eg. 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 BRAND RECOGNITION- They know your name but don’t prefer it over competition. BRAND PREFERENCE- They pick your brand based on previous experience with it. BRAND INSISTANCE- Won’ accept alternatives eq. monopoly status. GENERIFICATION your brand becomes synonymous with the category . You may be cannibalized by your own success

Importance of Brands’ management Brands’ audit Improper use of trademarks may results in their lost as they become generic. E.g: which of the following brands were initially registered Trademarks? Nylon Kerosene Trampoline Zipper Cola Escalator Cellophane Thermos Kleenex Aerobics Super Glue Yo-Yo Aspirin Coke Kleenex = facial tissue Coke = soft drink Xerox = photocopier FedEx = overnight courier service Thermos = hot water bottle …ALL BUT became generic trademarks and “cannibalized” by their own success

Enforcing Trademarks Responsibility on trademark owner to identify infringement and decide on measures; — “Cease and desist letter” to alleged infringer; — Search and seize order; — Cooperation with customs authorities to prevent counterfeit trademark goods; — Arbitration and mediation (preserve business relations). In many countries, to enforce trademark rights, the owner of the trademark has to provide evidence or proof of use of the mark in relation to the goods or services specified in the trademark register, aside from proof of infringement

Enforcing trademarks- E.g: The Coca-Cola Co. of Canada v Pepsi-Cola Co. of Canada (RPC) 1942 Coke sued Pepsi for infringing their registered trademark. Court held that “Cola” was simply a descriptive word identifying a type of beverage and that the “distinguishing feature” of the Coca-Cola trademark is the word COCA. As the distinguishing feature is not borrowed, there is no likelihood of deception.

Enforcing trademarks. Eg. Adidas America, Inc et al v. Payless Shoesource, Inc Whether Payless Shoesource Inc has violated Adidas’s THREE STRIPES trademark and the SUPERSTAR Trade dress by infringement, dilution or injury to business reputation? The final jury verdict in 2008 awarded Adidas a staggering total of $304.6m. Later reduced to $65m-Adidas remains victorious. Sample of Adidas shoes Sample of Payless shoes

WIPO BRANDING INITIATIVE IN TANZANIA
Zanzibar known for its unique qualities and demanded in the international level Examples of unique features include: Low oil content organic aroma flavor- bitter sweet Appearance of Clove- brown reddish Size and thickness- long and thin

Zanzibar Cloves IP and Branding project WHY? Distinguish Zanzibar clove from similar products Capture and further build good will and reputation of Zanzibar clove emanating from its intrinsic value Impart a message of distinctiveness to consumers and develop their understanding and association of the brand and clove products Create and retain customer loyalty Maintain and enhance quality of clove to maintain brand promise Increase marketability and commercial value of clove products Increase income earnings of producers and enhance foreign exchange earning of Zanzibar

Key issues What should be done in designing a brand? What factors should be taken into account when designing a brand? What IP tools can be used to protect the brand? How will the choice of IP tool be made? Where should the brand be protected? Who should own the IP? Who will be entitled to use the protected brand? What will be the requirements for use of the brand? Who will spear head the process? How will ownership and involvement of stakeholders be ensured? Who will manage and promote the brand, keep track the use of the brand, monitor infringers and take action? Should the brand be complemented by certification systems and fair trade label? How will the branding strategy be financed? How will the cost of brand development, protection, management and enforcement be met? What are the business strategies that should be employed to ensure realization of brand promise?

NEXT… Tanzanian coffee branding initiative

CONCLUSION Communication to the stakeholders is key!
Protection of identity features is key! Greatest brands have understood the importance of: Protecting the visual elements of the brand. Actively manage the brand as a business asset. Gain stakeholder buy in through education, motivation and engagement.

THANK YOU FOR YOUR ATTENTION marina.sauzet@wipo.int

THE ROLE OF TRADEMARKS IN BRANDING

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