Branding and Trademarks updated 2006

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Branding and Trademarks(updated 2006)

• Caroline Schwab - Program officer
• Small and Medium-Sized Enterprises Division
• WIPO - World Intellectual Property Organization

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Branding and trademarks are keys to success in
business and in the global market
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What is Branding

• Branding -- is the process by which the name or
  the identity of a company, an enterprise, an
  organization (etc.) is communicated.
• Branding allows a company to differentiate its
  products and services from the competition by
  creating a bond with its customers. It aims to
  take a position in the marketplace and create
  customer loyalty.
• It is the way by which companies launch and sell
  goods services, communicating the essence of
  new products and lines, highlighting why it is
  great and better than all competing products.
• It reflects in general a prestigious (aesthetic)
  image in order to attract more consumers.

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Successful BrandingCATCHES THE CONSUMERS
CURIOSITY

• DEVELOPING A BRAND IS PART OF A STRATEGIC
  BUSINESS PLAN
• Target what customers care about Articulate
  precise values and qualities that are relevant
  and of direct interest
• Emphasize features that are both important to
  consumers and quite differentiated from
  competitors
• Sell the brand outside (but also think about
  motivating your partners your employees in the
  development of your brand).
• Keep the brand flexible, create multiple
  variations and names for your products, imagine
  in advance a rich collection of packaging

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(No Transcript)
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C1 - corporate identity for industrial
companies OmegaTech, paintwork material
productionAnton Smirnov (Russia)
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FC TECHNOLOGY, make-up cosmetics produced
byICOM (Russia)
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Sample of branding - corporate identity for
retail (supermarkets, shops, boutiques, bars and
restaurants (Maraschino, Bar's name refers to a
authentic liqueur which has been produced in
Zadar area (Croatia) for decadesStudio Cuculic
(Croatia)
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Froggy, computer production and repairZebra
design branding (Russia)
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1961 Coca Cola original vintage advertisement.
Features a Valentine's Day
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(No Transcript)
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What is a Trademark?

• A BRAND NAME - A KIND OF VISIT CARD THAT
  PROMOTES THE IMAGE OF A COMPANY AND ITS RANGE OF
  GOODS SERVICES.
• A sign distinguishing goods or services produced
  or sold by one enterprise (from those of other
  enterprises).

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A TRADEMARK IS MADE OF Any Distinctive Words,
Letters, Numerals, Pictures, Shapes, Colors,
Logotypes, Labels

• Examples

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Less traditional forms

• Single colors (Louis Vuitton)
• Three-dimensional signs
• (shapes of products
• or packaging)
• Audible signs (sounds)
• Olfactory signs (smells)

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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
• Tradename (Brand name) ()

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The function of a Trademark

• Allows companies to mark A TERRITORY, EXPRESSING
  specific functions among similar products in the
  market.
• Ensures that consumers can identify a line of
  products.
• Ensures extension of the mark through licensing
  or franchising process.

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The value of a Trademark?

• A marketing tool
• A source of revenue through licensing
• A crucial component of franchising agreements
• Useful for obtaining banks or third part finance
• A valuable business asset

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The Value of Trademarks

• Global Brand Scoreboard
• 1. Coca-cola 67.52 billion
• 2. Microsoft 59.95 billion
• 3. IBM 53.37 billion
• 4. GE 46.99 billion
• 5. Intel 35.58 billion
• (German survey January 17, 2006)

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Trademark protection gt Registration

• Exclusive rights prevent others from marketing
  products under same or confusingly similar mark
• Secures investment in marketing efforts
• Promotes customer loyalty/ reputation / image of
  company
• Provides coverage in relevant markets where
  business operates
• Registered marks permit license or basis
  franchising agreements

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PRACTICAL ASPECTS

• Create or buy a trademark (after searching
  worldwide to find out that there are no similar
  registered ones -avoid claims- refusals or
  oppositions
• Protect your trademark through your national or
  regional office and then extend it to the world
  (WIPO Madrid Protocol System)
• Use and maintain your trademark(s) (paying fees,
  following notification of refusals, extending
  territory)
• Enforce your trademark(s), innovate (develop new
  products)

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What to avoid when selecting a Trademark

• Generic terms CHAIR to sell chairs
• Descriptive terms SWEET to sell chocolates
• Deceptive terms ORWOOLA or Pure whool
  for 100 synthetic material
• Marks and terms contrary to public
  order/morality
• Do not use flags, armorial bearings, official
  hallmarks, emblems without a legal authorization

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What to Remember when selecting Trademark?

• Create inherently distinctive mark
• Think about fanciful names as Kodak
• Arbitrary marks and logos as apple for
  computers
• Suggestive marks as SUNNY for heaters
• A mark easy to memorize and pronounce, with a
  positive connotation and that fits product or
  image of the business
• Has no legal restrictions or reasons for
  rejection
• TM searchgtnot identical or confusingly similar to
  existing
• Suitable for export markets with a corresponding
  domain name which is not already used

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Protecting a TM through registration

• The applicant can file a request at his national
  office and then at WIPO which offers free
  assistance, information guidelines for
• Filing application forms, contact details, fees
• Registration and certificate valid for 10 years
• Renewal services publication (CD-ROMs /Gazette)
• The IP national office is the only authority in
  charge of
• Formal examination
• Substantive examination
• Publication and opposition

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Madrid System for the International Registration
of Marks
The Madrid system for the international
registration of marks (the Madrid system), that
was established in 1891, functions under the
Madrid Agreement and the Madrid Protocol (adopted
in 1989) are administered by the International
Bureau of WIPO located in Geneva headquarters in
Switzerland. This system for an international
protection of Trademarks and Brands is adopted by
more than 70 member states of WIPO, which
are members of the  MADRID UNION 
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Madrid System for the International Registration
of Marks
The Madrid and the Protocol system offers the
possibility to record a trademark in more than 70
countries at once WIPO has made possible a free
search on-line of all the trademarks recorded at
wipo under Madrid Express http//www.wipo.int/ma
drid/en/services/ MANY REGISTRIES FOR SEARCH ARE
AVAILABLE IN THE PRIVATE SECTOR OR VIA THE IP
OFFICE, COUNTRY BY COUNTRY.
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Protecting a TM through registration

• While filling in a TM application, it is critical
  to register your trademark in all classes in
  which you use or intend to use your trademark.
• The most widely used classification system (Nice
  has 34 classes for goods and 11 for services - a
  total of 45 classes of goods and services).
• Some TM offices such as in US and Canada require
  the proof that the TM is used.
• A substantive examination may be required to
  avoid conflict with an existing and similar Mark,
  previously registered.
• Some countries publish the TM in a journal
  allowing 3rd parties to make an opposition
  (during a certain period of time).
• Once it is decided that there are no grounds for
  refusal, a certificate is issued with a validity
  of 10 years.
• Registration can be renewed indefinitely but may
  be cancelled if TM is not actively used for a
  certain period stated in the TM law.

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Scope of Rights

• The exclusive right to use the mark
• The right to prevent others from using an
  identical or similar mark for identical or
  similar goods or services
• The right to prevent others from using an
  identical or similar mark for new goods or
  services

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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

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PROTECTING AT HOME AND ABROAD

• The national route
• Each country where you seek protection
• The regional route (for some countries only)
• Countries members of a regional trademark system
  African Regional Industrial Property Office
  Benelux TM office Office for Harmonization of
  the Internal Market of the EU Organisation
  Africaine de la Propriété Intellectuelle
• The international route
• The Protocol Madrid system administered by WIPO
  (over 70 member countries)

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USING A TRADEMARK

• Actively using a TM
• Using/maintaining a TM in marketing and
  advertising
• Using the mark on the internet
• Using the mark as a business asset

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ACTIVELY USING A TRADEMARK

• Offering the goods or services
• Affixing the mark to the goods or their packaging
• Importing or exporting the goods under the mark
• Using it on business papers or in advertising

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USING A TRADEMARK IN ADVERTISING

• Shall be used exactly as registered
• Protect TM from becoming generic
• Set apart from surrounding text
• Specify font, size, placement and colors
• Use as an adjective not as noun or verb
• Not plural, possessive or abbreviated form
• Use a trademark notice in advertising and
  labeling
• Monitor authorized users of the mark
• Review portfolio of trademarks
• An evolving trademark

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USING A TM ON THE INTERNET

• Use of TM on internet may raise controversial
  legal problems
• Conflict between trademarks and domain
  names(internet addresses) - cyber squatting
• WIPO procedure for domain name dispute
  (http//arbiter.wipo.int.domains)

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USING A TRADEMARK AS A BUSINESS ASSET

• Licensing owner retains ownership and agrees to
  the use of the TM by other companies in exchange
  of royalties gt 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, s/w, shop decoration,
  etc)
• Selling/assigning TM to another company (merger
  acquisitions/raising of cash)

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ENFORCING TRADEMARKS

• Responsibility of TM owner to identify
  infringement and decide on measures
• Cease and desist letter to alleged infringer
  (s)
• Search and seize order
• Cooperation with customs authorities to prevent
  counterfeit trademark goods
• Arbitration and mediation (preserve business
  relations)

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SMES GUIDE FOR TRADEMARKS
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THANK YOU FOR YOUR ATTENTION Caroline Schwab -
Program Officer SMEs Division
www.wipo.int/sme/en SUSCRIBE TO OUR NEWSLETTER
ON-LINE sme_at_wipo.int