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

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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

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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
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Best Global Brands
(Best Global Brands 2006, Interbrand,
www.interbrand.com)
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2. Trademarks
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A sign capable of distinguishing the goods or
services produced or provided by one enterprise
from those of other enterprises
What is a Trademark?
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Any Distinctive Words, Letters, Numerals,
Pictures, Shapes, Colors, Logotypes, Labels or
Combinations
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Some Concepts of Trademarks
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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

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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

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Less Traditional Forms

• Single colors
• 3-D signs (shapes of products/packaging)
• Audible signs (sounds)
• Olfactory signs (smells)

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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

functionality test
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Single color?

• 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)

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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.
?
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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

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Registering a Trademark Step by Step
1. Making a Mark Trademark Search
2. Application
5. Registration Renewal
3. Formality Check Examination
4. Publication Opposition
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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

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3 Ways for International Application
The Regional Route
The Madrid Route
The National 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.

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3. Geographical Indications
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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

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• Mostly name of place of origin
• Country, region, city
• E.g. Champagne (France)

• Some countries also figurative element
• E.g. Eiffel tower, Egyptian pyramid

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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)

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• 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

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• 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

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• 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

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• 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

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

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• - 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

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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

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Thank You !
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