1. Branding and Marketing
- Role of Trademarks and Geographical Indications -
May 2007, Geneva
Won-Kil YOON
Counsellor, SMEs Division
World Intellectual Property Organization (WIPO)

2. 1. Branding & Marketing

3. Reputation plays important economic role, through a distinctive sign like a brand, of signalling a certain level of quality that consumers learn to expect. By persistent maintenance of this minimum level of quality, reputation economises search costs for consumers. Consequently producers of reputable products charge a premium price, and consumers are willing to pay this premium.
Many features of cleaning products are unobservable. Those features may be crucial determinants of the total value of the good for the consumers. Branding helps to identify the unobservable qualities, so that the consumers can easier make a choice.
This unique shoe is synonymous with the local sport of fell running and fell racing. (The word ‘fell’ means hill). Norman Walsh’s handiwork is known by competitive trail and mountain runners worldwide. After all, he’s probably the closest thing there is to being the father of specialized trail running shoes.
Norman Walsh designed and developed their own version of a fell running shoe. One of their early designs had soft black leather uppers and a light chocolate brown wavy- patterned sole. It became the approach shoe for many British rock climbers. Its designed purpose was as an “all round training shoe”.

4. Why does a brand matter?
“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.”
Consumer needs to identify reliable grocer, make profitable investment, etc. Collecting reliable information to enable these economic decisions to be made is a costly and time consuming process. Consumers rely on variety of information sources, such as previous experience, friends & family, trade journalists, public advisory bureaus and advertisements, to assess the comparative trustworthiness of potential sellers.

5. What is Branding? Making company image as seen by the customer
Good branding : getting people to recognize your product as the best in the market
Brand : what differentiates you mostly from your competitors in the market
- Co-branding : useful for entering new markets (ex. LG-Phillips)
- Multibranding : useful for attracting various consumers
ex.) For core premium customer : Nike brand
For discount shoppers : Starter brand
For “lifestyle” consumers : Converse Sneaker brand

6. Guiding Principles to make a Good Brand
Able to be protected as a trademark
The best brand for your business
Easy to read, write and remember
Acceptable in major overseas markets
Able to be registered as domain name

7. Best Global Brands 14% 30,131 Telecom Equipment 6. Nokia 12% 27,941
Automotive
7. Toyota
-9%
32,319
Computer Hardware
5. Intel 5%
27,848
Media/Entertainment
8. Disney
Diversified
Computer Services
Computer Software
Beverages
Sector
Change in Brand Value
2006 Value ($m)
Brand
48,907
56,201
56,926
67,000 4%
-5%
-1%
4. GE
3. IBM
2. Microsoft
1. Coca-Cola
(Best Global Brands 2006, Interbrand,

8. 2. Trademarks

9. What is a Trademark?
“A sign capable of distinguishing the goods or services produced or provided by one enterprise from those of other enterprises”
Distinguish is crucial: if not distinctive: cannot get protection as TM. If TM (sign) loses its distinctive capability: TM can get cancelled (generic).
Dual role of TM is (a) protecting investments in brand development and (b) be information channel. To fulfil this dual role, the TM must be distinct and differentiated.

10. Any Distinctive Words, Letters, Numerals, Pictures, Shapes, Colors, Logotypes, Labels or Combinations

11. Some Concepts of Trademarks
very famous in the market and
as a result benefit from stronger protection
to distinguish goods or services certified
by a certifying authority
to distinguish goods or services by
members of an association
to distinguish services
to distinguish goods
Well-known mark
Certification mark
Collective mark
Service mark
Trade mark

12. Swoosh: consumer knows: Nike, + all reputation attached to it.

13. 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

14. What to avoid when selecting a trademark
Generic: CHAIR to sell chairs
Descriptive: SWEET to sell chocolates
Deceptive: “ORWOOLA” for 100% synthetic material
Marks contrary to public order/morality

15. Less Traditional Forms
Single colors
3-D signs (shapes of products/packaging)
Audible signs (sounds)
Olfactory signs (smells)

16. Application: single color?
In principle, single color is considered as not distinctive
Exceptionally, if it gets secondary meaning it may receive TM protection
* secondary meaning : acquired strong distinctiveness through use
However, colors are in limited supply …
- allowing companies to appropriate colors will soon lead to
the "depletion" of all attractive colors in each product line
- preventing use of color would put competitors at a
significant disadvantage
Color is an important element in branding and corporate identification. That colors are so used and relied upon by the public is beyond doubt. Consumers can distinguish a particular product or service from the color
Ex Violet for milka chocolats.
Whether a specific, single color has the ability to function as a trademark, is a question of fact in each case.
functionality test

17. Single color? Blue Frozen Desserts (Ambrit v. Kraft) US Courts
Royal blue is a “cool color”. It is suggestive of coldness and used by a multitude of ice cream and frozen dessert producers
Royal blue when used to package frozen desserts is functional and can not be monopolized in a trademark
Blue Frozen Desserts (Ambrit v. Kraft)
Ambrit, a frozen food company, had sold their frozen desserts in royal blue packaging. Kraft Foods used same color on their packaging for frozen desserts. Ambrit sued to prevent Kraft from using blue. Does Ambrit - who first used this color - own the rights to blue on frozen desserts?
The U.S. courts denied Ambrit's request for protection of blue, on basis that royal blue when used to package frozen desserts was functional and could not be monopolized in a TM. The ruling stated: "Royal blue is a 'cool color;' it is suggestive of coldness and used by a multitude of ice cream and frozen dessert producers." Although the ruling acknowledged the issue of protecting the consumer from confusion, preventing a monopoly of a functional color was a greater issue. Preventing the use of a color would put a competitor (Kraft) at a significant disadvantage.
When a color’s associations relate to the product in a literal or abstract way, this is considered to be functional. For example, green is frequently used in packaging of organic, healthy and natural products because if the association with trees, grass and nature.
Source:

18. Application: 3D trademark?
Lego: Patent expired in 1988
- competitors (Tyko, Mega Bloks, COKO): identical "legos" that are interchangeable and compatible with Lego system
The Lego brand is all they have left …
Tried 3-dim Mark
Canadian court + OHIM:
No TM rights in purely functional elements of a product.
If LEGO is unable to rely upon patent protection for those utilitarian features, then those features are available for all to use.
“LEGO indicia” – a geometrically arranged knobbed or studded upper surface on each building brick that was intended to fit snugly into the underside of companion bricks. LEGO indicia: patent protection in many countries, incl Canada. Patents expired in 1980s. After expiry, Ritvik (Canada) manufactured own brand of toy construction bricks incorporating the same knob or studded locking mechanism that it marketed under “ MICRO MEGA BLOKS”.
LEGO attempted to convert its former patent rights into trademark rights.
While patents grant an inventor a time-limited monopoly, TM rights offer potentially perpetual monopoly so long as the mark continues to serve as an indicator of source of origin of a product/service. It was LEGO’s contention that the LEGO indicia had acquired distinctiveness and that anyone who examined a building brick that incorporated the LEGO indicia would think that the product was made or authorized by LEGO. This argument was not accepted by the Canadian IPO and it rejected LEGO’s application to register the LEGO indicia as a TM in Canada. The Registrar of TM took position that no one could claim TM rights in purely functional elements of a product. If LEGO was unable to rely upon patent protection for those utilitarian features, then those features were available for all to use. A similar position was adopted by the Cancellation Division of the OHIM when it cancelled LEGO’s Community TM registration for the LEGO indicia. ?

19. Ways to Use Trademarks as Business Assets
Marketing tool
Source of revenue through licensing
Crucial component of franchising agreements
May be useful for obtaining finance
Sale of TM itself

20. 4. Publication & Opposition
Registering a Trademark – Step by Step
1. Making a Mark
& Trademark Search
2. Application
5. Registration & Renewal
3. Formality Check
& Examination
먼저, 특허청의 지식관리체계를 설명 드리겠습니다.
4. Publication & Opposition

21. 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
if well-known: also for goods or services of different kind

22. 3 Ways for International Application
The National Route
The Regional Route
The Madrid Route
- Application to the
countries of
Union or WIPO
- One international
application,
in one language,
subject to
one set of fees
and deadlines
- Application to
countries
in the required
language
- Priority right of 6
months under
Paris Convention
- Application to
regional trademark
offices
- The African
Regional Industrial
Property Office,
OHIM for the EU,
etc.

23. 3. Geographical Indications

24. What is a Geographical Indicaton?
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
- ask examples of GIs (champagne, cognac, roquefort, havana, burgundy, tequilla
- what do they have in common? Famous places + relate to products of certain quality and nature
- in commerce: valuable assets, able to acquire high reputation, often exposed to counterfeiting, protection is highly desired

25. Mostly: name of place of origin
Country, region, city
E.g. Champagne (France)
Some countries: also figurative element
E.g. Eiffel tower, Egyptian pyramid
Matterhorn, Switzerland
Eiffel Tower,
Paris
Tower Bridge,
London
- ask examples of GIs (champagne, cognac, roquefort, havana, burgundy, tequilla
- what do they have in common? Famous places + relate to products of certain quality and nature
- in commerce: valuable assets, able to acquire high reputation, often exposed to counterfeiting, protection is highly desired

26. How does a GI work?
Basically, each enterprise located in the area has right to use GI freely
For some products,
Subject to certain quality requirements,
only authorized persons may use the GI
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)

27. Unauthorized persons should not use GIs since it could mislead public as to 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

28. 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

29. Also: handicrafts and medium-tech goods
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

30. National legislation to protect Geographical Indications
Special system for protection
Registration with IP office (Russia, Slovenia)
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, UC, Consumer Protection
If reputation + misleading
Pass off: e.g. Scotch whisky – Peter Scot in India
Cons prot: e.g. ‘made in Japan’; Egyptian cotton
Passing off: even if not registered
As regards the enforcement of GIs in India, the Khoday Distilleries case shows how sensitive the Indian courts are towards protecting world famous GIs. In this case the Scotch Whisky Association, based in Scotland, argued that the use of the word Scot in relation to whisky by an Indian company passes off the reputation of Scotch Whisky, which is geographically indicative. The mark in question was Peter Scot. This mark was registered in India in the name of Khoday Distilleries Limited (registration in class 33) in The Scotch Whisky Association asked the Trade Marks Registrar in India to remove the mark Peter Scot from the Register. The Registrar allowed the application. Khoday Distilleries subsequently appealed to the High Court. While hearing the appeal, the judge in the Madras High Court said that even the use of the word "Scot" by an Indian Distillery in relation to whisky is unacceptable.

31. Protection on international level
No legally binding international register for all GIs
Bilateral agreements
e.g. EU-Bulgaria for wine names
International treaties
TRIPS
- does not prevent GIs from becoming generic
- does not prevent abuse of GI name by trademark holder

32. - TRIPS: - Lisbon: 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
TRIPS
- does not prevent GIs from becoming generic
- does not prevent abuse of GI name by trademark holder

33. Benefits for SMEs Collective branding and marketing
For good reputation, GIs shift focus of production to quality
 increased production and 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

34. Thank You ! WIPO SMEs Web-Site Won-Kil YOON “www.wipo.int/sme”
“Making a Mark” in Publications
“IP Panorama” in Multimedia
“E-NEWSLETTER”
Won-Kil YOON
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